Opposition Brief — Riverwood International Corp. v. Mead Corp.

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f a Court, U.S

> FILED

No. 00-442 » OCT 23 «ce

FEE OF THE CLERK

IN THE

Supreme Court of the United States

RIVERWOOD INTERNATIONAL CORPORATION,

Petitioner,

THE MEAD CORPORATION,

Respondent.

On PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

BRIEF IN OPPOSITION

aoe

J. PETER COLL, Jr.

Counsel of Record

JAMES J. MURTHA

KRISTEN BANCROFT

OrRICK, HERRINGTON

& SUTCLIFFE LLP

666 Fifth Avenue

New York, New York 10103

(212) 506-5000

Counsel for Respondent

f 2

OBJECTIONS TO QUESTIONS PRESENTED

Respondent The Mead Corporation (“Mead”) objects to

the erroneous statements included in the first Question

Presented by Petitioner Riverwood International Corporation

(“Petitioner’’), specifically (i) that the Federal Circuit did

not “undertak[e] the required review of the underlying

findings of fact,” (ii) that the Federal Circuit did not

“acknowledg[e] petitioner’s assertion of numerous clear

errors in those findings,” and (iii) that the alleged errors in

the findings “would require upholding the district court’s

conclusion that the patent was not invalid for obviousness.”

As demonstrated infra, the Federal Circuit both

acknowledged Petitioner’s assertion of clear errors and

undertook to examine the findings of fact underlying the

district court’s judgment, and, therefore, statements (i) and

(ii) are inaccurate and misleading. Statement (iii) represents

Petitioner’s litigation position, not a fact, and is misleading

to the extent that Petitioner relies upon it as a factual basis

for the Question Presented.

STATEMENT PURSUANT TO RULE 29.6

The Mead Corporation has no parent company and there

is no publicly held company which owns 10% or more of

The Mead Corporation’s stock.

ill

TABLE OF CONTENTS

Objections to Questions Presented ..............

Statement Pursuant to Rule 29.6 ...............

NOE Se

I cc cece esc ccccen

Counter-Statement of the Case .................

Reasons for Denying the Writ .......7.........

I. The Federal Circuit’s Decision Was

Consistent With This Court’s Long-Standing

Precedent Which Permits An Appellee To

Attack The Reasoning Underlying A

Judgment That It Seeks To Uphold. .......

II. The Decision Below Does Not Conflict With

Panduit IT Nor With Any Authority Of This

Court Or The Federal Circuit. ...........

A. Panduit II Does Not Require The

Federal Circuit To Perform An Express

Analysis Of Every Factual Finding

Underlying A Judgment. ............

B. The Federal Circuit Gave Appropriate

Consideration To The Factual Findings

Underlying The Determination On

. ES Se es are

GSS le

TABLE OF CITED AUTHORITIES

Page

Cases:

Anderson v. City of Bessemer City, 470 U.S. 564

CREE <3 cok Wee hee eee nia el ae eee 4

Apgar v. State, 2000 WL 1059444 (10" Cir. Aug. 2,

EE Sass oda bce 12

Carnival Cruise Lines, Inc. v. United States, 200

Pie oe Ce: Ca De heck eck ade cw we erin 8

Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809

CURE 63 6340b540 nn ab deee dues ee 10, 11

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

CRD OOS 5:65.55 wend «ended s Cee 8

Graham v. John Deere Co., 383 U.S. 1 (1966) ...5, 9, 13

John v. Barron, 897 F.2d 1387 (7" Cir. 1990) .... 12

Morley Constr. Co. v. Maryland Cas. Co., 300 U.S.

NOP CADOED nbc tn 060 nuk dba oed pes eee 6,8

Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561

(Fed. Cir.), cert. denied, 481 U.S. 1052 (1987)

1 1a NRE ARR RES ee eee 6,9, 11,12

Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418 (Fed. Cir.

ROUGE ciccctackeesGakesl Caeeeeedeas 3

Cited Authorities

Page

Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530

hes Bie ei) PE re ee ar en 9

United States v. American Ry. Express Co., 265 U.S.

fee de ie) REET EEE ONE POP OPT Te eae 8

United States v. United States Gypsum Co., 333 U.S.

ccd ‘tania, MEO ECE ene etre eae 3,11, 12

Statutes:

ae We ae Se ch eh coheed ak 2

WP OMEN SE EE nocd cache und bvkes cack. t, a, oi, 12

Rules:

in ek, | Eee 9

PO Mes PO Be OD vc kins cine cnduicencad. 1]

Seto, . 2 SETS 24 re aie ate eee 1]

Ns i a a Sai ne aa

Rr A i es 12

Pa ee Mes B OOUMAD hs dm 6 dw dashed eee ccincs 2

ee a as ee 1

TABLE OF APPENDICES

Page

Appendix A — Brief Of Plaintiff-Appellee

Riverwood International Corporation Dated June

SD, SGe 5 cee os ea ae OE eo bes la

Appendix B — Transcript Of Oral Argument Of The

United States Court Of Appeals For The Federal

Circuit Dated February 9, 2000 .............. 58a

1 ‘

COUNTER-STATEMENT OF THE CASE

The Petition for a Wnit of Certiorari (“Petition”) hinges on

Petitioner’s misleading assertion that Petitioner provided the

Federal Circuit with a showing — supposedly supported by the

evidentiary record — that the district court’s findings of fact

were clearly erroneous, but that its showing was ignored by the

Federal Circuit because Petitioner was the appellee and was

precluded from filing a notice of cross-appeal. On the contrary,

as demonstrated in Petitioner’s brief on appeal, Petitioner,

recognizing the lack of evidentiary support to attack the district

court’s findings of fact as clearly erroneous, made a strategic

decision not to rely upon purported clear error in the findings

of fact. See Appendix (“App.”), infra, 1a-56a. Rather, it chose

to posit the great majority of its disputes with the district court’s

findings of fact as legal — not factual — error. This strategy

proved unavailing when the Federal Circuit examined the

findings of fact and ruled in favor of Mead, reversing the

district court’s erroneous legal conclusion and holding the

relevant claims of the patent-in-suit to be invalid for obviousness

under 35 U.S.C. § 103. Now Petitioner seeks a grant of certiorari

to rescue it from its failed strategy. A writ of certiorari is granted

to review lower courts’ conflicts and errors in important

questions of federal law, see Sup. Ct. R. 10, not to remedy a

party’s tactical decisions below. The Petition should be denied.

As set forth in the Petition, the underlying dispute concerns

Petitioner’s claim that Mead infringed claims 1 and 13 of

Petitioner’s United States Patent No. 5,241,806 (the “ ‘806

Patent’’). On the consent of the parties, the case was tried before

a Special Master. After a seven-day trial, the Special Master

issued a Report containing findings of fact and conclusions of

law, in which he concluded, inter alia, that claims 1 and 13 of

the ‘806 Patent were invalid for obviousness pursuant to

35 U.S.C. § 103. Appendix to Petition (“Pet. App.”) 54a, 57a.!

The district court ruled, at a hearing conducted after both

parties had submitted objections to the Special Master’s Report,

that although it agreed with all other aspects of the Report, it

would reject the legal conclusion of invalidity based on

obviousness. Both parties submitted proposed orders to

implement the district court’s oral ruling. Recognizing that a

conclusion of non-obviousness could not be supported by the

Special Master’s factual findings, Petitioner submitted a

proposed order asking the district court to reject or modify all

of the Special Master’s findings necessary to the obviousness

determination, particularly findings of fact 34 through 41,

46 through 48, 50 through 54, 56 and = Fed. Cir. App. A1980-

20187; Pet. App. 29a-39a.

Rejecting Petitioner’s proposed order, the district court cited

Federal Rule of Civil Procedure 53(e)(2), and “accept[ed] each

of the Special Master’s findings of fact as to all the matters at

issue, finding none of them clearly erroneous.” Pet. App. 9a.

The court “commend[ed] the thoroughness and ability with

which the Special Master [had] performed his duties,” and

explained that “the fact that the Court does not come to the

same conclusion of law as the Special Master in one instance is

certainly no reflection on the excellence of his report.” Jd.

1. The Special Master also made findings of fact that were not

relevant to the obviousness issue, and arrived at the legal conclusions

that claims 1 and 13 were infringed, that the patent was not invalid on

the basis of 35 U.S.C. § 102 (anticipation) and that the patentee had

not engaged in inequitable conduct in the United States Patent and

Trademark Office. Pet. App. 45a, 47a, 57a.

2. References to the Joint Appendix in the Federal Circuit shall

be cited as “Fed. Cir. App. _”

~™ ! (Ul (((_.“<_ << ————----- ===

Mead timely filed a Notice of Appeal, which properly

specified that Mead was appealing from that portion of the

district court’s judgment that held the ‘806 Patent not invalid

for obviousness. Pet. App. 60a-61a. In its briefs to the Federal

Circuit, Mead argued that the findings of fact, established by

clear and convincing evidence and adopted by the district court,

led to but one conclusion — that the ‘806 Patent was invalid

for obviousness — and that the district court had erred in

concluding otherwise.

Despite Petitioner’s suggestions to the contrary, it was not

precluded from contending on appeal that the findings of fact

were clearly erroneous; it had the right to urge any evidence in

the record in support of the judgment that it sought to affirm.

See discussion, infra, at 7-10. In fact, in defense of the judgment

below, Petitioner asserted, “Riverwood does believe that a

number of the Special Master’s factual findings are clearly

erroneous and most of those erroneous findings are discussed

herein. However, Riverwood believes that, even under the facts

as found by the Special Master, claims 1 and 13 of the ‘806

patent have not been proven invalid.” App., infra, 23a n.13.

Accordingly, Petitioner’s brief to the Federal Circuit reflects

its primary reliance upon legal arguments rather than evidentiary

challenges to the facts. App., infra, 24a-56a.

Indeed, Petitioner made every effort to escape from the

“clear error” standard of review.’ Illustrative of Petitioner’s

3. Under the applicable standards of review, the district court’s

findings of fact could be reversed only if clearly erroneous, i.e., only if

“the reviewing court on the entire evidence is left with the definite and

firm conviction that a mistake has been committed.” United States v.

United States Gypsum Co., 333 U.S. 364, 395 (1948); accord Fed. R.

Civ. P. 52(a); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 1423 (Fed.

Cir. 1988) (factual findings underlying obviousness determination are

subject to clear-error standard of review).

strategy was its challenge to the finding — alleged to be clearly

erroneous — that there was an “insufficient nexus” linking

commercial success of the Twin Stack machine‘ to the invention

disclosed in claims | and 13 of the ‘806 Patent’:

¢ Petitioner attempted to convert its factual

challenge to a legal argument, asserting thi... the

Special Master had committed legal — not

factual — error in its evaluation of the factors

contributing to the alleged commercial success

of the Twin Stack. App., infra, 47a-52a.

* Petitioner contended that the record contained

substantial evidence supporting its theory of

nexus, without providing any citations to the

record to support this assertion. App., infra, 48a.

But even if Petitioner had cited substantial

evidence, this would not suffice to establish that

the contrary factual finding was clearly

erroneous. See Anderson v. City of Bessemer

City, 470 U.S. 564, 574 (1985) (under Rule

52(a), “[w]here there are two permissible views

4. The Twin Stack is Petitioner’s cartoning machine embodying

the ‘806 Patent. Pet. App. 2a.

5. Petitioner’s sole evidentiary attack on the nexus issue focused

on the finding that Petitioner had entered into a development agreement

with Pepsi-Cola, under which Pepsi-Cola funded the development of

the Twin Stack in return for rebates on cartons and an exclusive option

on cartoners. To demonstrate clear error, Petitioner cited evidence

demonstrating that Pepsi-Cola had funded the acceleration of the

machine, that Pepsi-Cola had received an exclusive option on the

cartoners, and that it had been offered a rebate on cartoners and on

cartons. App., infra, 49a. In short, the evidence cited failed to establish

any error whatsoever in the factual finding.

ye ee ee

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of the evidence, the factfinder’s choice between

them cannot be clearly erroneous’”’).

Moreover, Petitioner’s purported challenges to the facts

were so vaguely articulated and poorly supported that the

Federal Circuit asked Petitioner at the oral argument for

clarification as to which findings were alleged to be clearly

erroneous. App., infra, 68a. The Federal Circuit not only gave

Petitioner the opportunity to clarify its assertions of clear error

— the court also expressly demonstrated its consideration of

those assertions. For example, informed that Petitioner was

attacking the factual findings concerning commercial success,

the court probed Petitioner to identify the evidence in the record

below which would support its attack. App., infra, 73a-74a.

In addition, the Federal Circuit expressly articulated

its understanding of its duty in considering the factual

underpinnings of the contested conclusion of non-obviousness,

asking Petitioner, “[D]o you agree that it’s our duty now

to take a look at those findings and come to a conclusion

ourselves as a matter of law .. .?” Counsel for Petitioner

assented: “My understanding is that you do the review [of the

conclusion] de novo, and that in looking at whether or not

[the district court] was right, I think yes you have to look at

those.” App., infra, 72a.

The Federal Circuit then did just that, noting in its decision

that “[oJur task is to examine the findings [of fact] related to

the factors articulated in Graham® and determine whether the

district court erred by deciding that the claims were not obvious

as a matter of law.” Pet. App. 4a. Based upon its examination

of the findings, after hearing Petitioner’s contentions regarding

6. The court was referring to Graham v. John Deere Co., 383

U.S. 1 (1966), in which this Court established the factual inquiries upon

which the legal conclusion of obviousness is based.

the sustainability of such findings, the Federal Circuit held that

the district court’s conclusion of non-obviousness was

erroneous, and it reversed and found claims | and 13 of the

‘806 Patent invalid for obviousness.

REASONS FOR DENYING THE WRIT

This case is not appropriate for the grant of a writ of

certiorari for the following reasons:

1. The Federal Circuit’s judgment below did nothing to

alter the availability of an appellee’s opportunity, in the absence

of a cross-appeal, to challenge the reasoning underlying a

judgment. Under this Court’s long-established precedent, an

appellee seeking to uphold a judgment may urge any matter

appearing in the record, and may even attack the reasoning of

the lower court. See Morley Constr. Co. v. Maryland Cas. Co.,

300 U.S. 185 (1937). In this case, Petitioner was not deprived

of the opportunity to have its challenges to the facts heard by

the Federal Circuit. Indeed, the Federal Circuit and Petitioner

agreed that the court had a duty to look at those facts as presented

to them by the parties on appeal, and that is exactly what the

court did. Pet. App. 4a (“Our task is to examine the findings

2. The Federal Circuit’s judgment was in harmony — not

in conflict — with its own precedent and with

the precedent of this Court. Contrary to Petitioner’s assertions,

Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561 (Fed-Cir.),

cert. denied, 481 U.S. 1052 (1987) (“Panduit IT’), does not

obligate the Court of Appeals expressly to explain how or why

each unassailable finding of fact is free from error. Rather,

Panduit IT establishes the appellate standard of review for the

elements of a determination of obviousness, and the Federal

Circuit properly applied that standard of review in reversing

the district court’s judgment. Petitioner essentially asks this

Court to require the Court of Appeals to state in every written

opinion an express analysis of each of an appellee’s arguments,

regardless of their merits. This argument lacks any legal

foundation, and it is unsuitable for this Court’s review.

I. THE FEDERAL CIRCUIT’S DECISION WAS

CONSISTENT WITH THIS COURT’S LONG-

STANDING PRECEDENT WHICH PERMITS AN

APPELLEE TO ATTACK THE REASONING

UNDERLYING A JUDGMENT THAT IT SEEKS TO

UPHOLD.

Petitioner attempts to fabricate a certifiable question by

contending that it was deprived of an opportunity to be heard

on its challenges to the district court’s findings of fact because,

as the appellee seeking to sustain the judgment, it lacked

standing to bring a cross-appeal. Black-letter law, however,

provides that an appellee is not required to file a cross-appeal

before the appellate court will hear its attack on the findings of

fact underlying a district court’s judgment. Here, both the

Petitioner and the Court of Appeals acted consistently with that

long-standing procedure: Petitioner did not notice a cross-

appeal; Petitioner did attack the findings of fact on appeal; and

the Federal Circuit considered those attacks. Thus, Petitioner

obtained the appellate review to which it was entitled, and its

“standing” contention is frivolous.

The “inveterate and certain” rule governing the arguments

that may be asserted by an appellee who has not filed a cross-

appeal is as follows:

Without a cross-appeal, an appellee may “urge in

support of a decree any matter appearing in the

record, although his argument may involve an attack

upon the reasoning of the lower court or an insistence

upon matter overlooked or ignored by it.”

Morley, 300 U.S. at 191 (quoting United States v. American

Ry. Express Co., 265 U.S. 425, 435 (1924)); see also El Paso

Natural Gas Co. v. Neztsosie, 526 U.S. 473, 479-80 (1999)

(confirming continued viability of rule).’ The only thing that

Petitioner

may not do in the absence of a cross-appeal is to

“attack the decree with a view either to enlarging

his own rights thereunder or of lessening the rights

of his adversary, whether what he seeks Is to correct

an error or to supplement the decree with respect to

a matter not dealt with below.”

Morley, 300 U.S. at 191 (quoting American Ry. Express, 265

U.S. at 435); see also El Paso, 526 U.S. at 479-80 (precluding

appellee from asserting argument that would result in

modification of judgment below).

In this case, Petitioner sought to affirm the district court’s

judgment, without modification or enlargement of its rights

thereunder. App., infra, 56a. Petitioner was not, therefore,

precluded from challenging the underlying findings of fact that

7. The Federal Circuit is well aware of this long-standing rule;

the court applied the rule earlier this year, holding that an appellee in a

customs appeal who had not filed a cross-appeal was not prohibited

from asserting, in support of the judgment below, an alternative legal

theory that differed from the district court’s reasoning underlying the

judgment. Carnival Cruise Lines, Inc. v. United States, 200 F.3d 1361,

1365 (Fed. Cir. 2000).

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formed part of the district court’s reasoning,* and, contrary to

the assertions in the Petition, the Federal Circuit’s opinion and

comments at oral argument reflect that it did not disregard

Petitioner’s contentions regarding the findings of fact. Rather,

the court “examine[d] the findings related to the factors

articulated in Graham and determine[{d] whether the district

court erred by deciding that the claims were not obvious as a

matter of law.” Pet. App. 4a. That examination of the facts was

promised at the oral argument when the Court of Appeals,

through its questioning of Petitioner’s counsel, made every effort

8. Petitioner’s assertion that it was not on adequate notice that

Mead’s appeal would not seek to overturn the district court’s factual

findings is both irrelevant and incredible. The Notice of Appeal was

entirely in conformance with Fed. R. App. P. 3(c), as it designates that

Mead was appealing the district court’s judgment holding claims 1 and

13 of the ‘806 Patent not invalid for obviousness. Pet. App. 60a.

Petitioner does not — and cannot — claim that the Notice was defective.

The notion that Petitioner was somehow caught off guard by Mead’s

position on appeal — that the district court had erred in making a legal

conclusion of obviousness based upon the undisturbed findings of fact

— 1s patently absurd for several reasons: First, Mead was not required

to attack every element of the district court’s reasoning in its challenge

to the judgment. As noted in Petitioner’s own brief on appeal, the Federal

Circuit reviews judgments, not opinions. See App., infra, 23a n.13

(citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed.

Cir. 1983)). Second, having sought to alter every one of the critical

findings of fact in the district court, Fed. Cir. App. A1980-2018,

Petitioner was well aware that the findings of fact supported a conclusion

of obviousness — the very result that Mead sought on appeal. Finally,

the very case upon which Petitioner bases its Petition, Panduit II, notes

that an appellant seeking to reverse a district court’s determination on

the issue of obviousness, without risking remand, has several options,

one of which “is to show that a proper application of the law to

unassailable findings compels reversal.” 810 F.2d at 1565. This is

exactly the showing that Mead made and that the Federal Circuit

adopted.

to understand and address Petitioner’s arguments and

contentions, in light of Petitioner’s obscure articulation and

deficient evidentiary support. App., infra, 68a-75Sa. Petitioner

received the judicial review which it sought and to which it

was entitled. Petitioner’s threat that a denial of certiorari will

somehow encourage appellees to file unnecessary cross-appéals

in order to secure appropriate review is belied by the review

that Petitioner received from the Federal Circuit. The writ of

certiorari is not warranted.

Il. THE DECISION BELOW DOES NOT CONFLICT

WITH PANDUIT IT NOR WITH ANY AUTHORITY

OF THIS COURT OR THE FEDERAL CIRCUIT.

Because the Federal Circuit’s opinion did not include an

express analysis of Petitioner’s unavailing attacks on

the findings of fact, Petitioner claims that the court failed

to follow the dictates of Panduit I]. There are two fundamental

flaws in this argument: (i) Petitioner misinterprets Panduit J]

to impose an affirmative obligation requiring the Court of

Appeals to make an express disposition of every factual

argument raised by an appellee, and (ii) Petitioner misreads the

Federal Circuit’s opinion as failing to address Petitioner’s

unsupportable factual attacks.

A. Panduit IT Does Not Require The Federal Circuit

To Perform An Express Analysis Of Every Factual

Finding Underlying A Judgment.

Panduit II, the comerstone of the Petition, was issued upon

remand after this Court’s decision in Dennison Mfg. Co. v.

Panduit Corp., 475 U.S. 809 (1986). There, the Court was

unable to exercise plenary review of the Federal Circuit’s

decision on appeal, because the decision failed to indicate

whether it had applied the clearly erroneous standard articulated

in Federal Rule of Civil Procedure 52(a) when reversing factual

findings. /d. at 811. On remand, the Federal Circuit provided

an extensive explanation of the nature of its review of the factual

findings underlying a determination on the obviousness issue.

Panduit II, 810 F.2d at 1565-68. As an introduction to its

discussion, the court stated that “[o]n review of a judgment

based on a conclusion of obviousness under 35 U.S.C. § 103,

this court must consider not only whether there is legal error,

but also whether the underlying findings are either nonprobative,

or clearly erroneous, or both.” /d. at 1565. Petitioner has seized

upon this quote, taken out of context, as the lynchpin of its

Petition for this Court’s review. Panduit I], however, does not

stand for the proposition that the Federal Circuit is affirmatively

obligated to publish an express analysis of every factual finding

in determining whether it is clearly erroneous. Petitioner has

not cited a single legal authority for this interpretation of Panduit

II. Indeed, Mead’s diligent search of Federal Circuit decisions

subsequent to Panduit IJ yielded no cases that interpreted the

case to require such an undertaking.

Petitioner’s interpretation of Panduit I//, in fact, is

inconsistent with the jurisprudence of other Courts of Appeals

and with the Federal Rules of Appellate Procedure, which

require a party to an appeal to articulate clearly

its contentions and the reasons therefor. See Fed. R. App.

P. 28(a)(9), 28(b). Here, Petitioner, having made a strategic

decision to avoid directly attacking the findings of fact as clearly

erroneous, confused its factual arguments. It argued that the

district court’s factual findings were the result of legal error

and that substantial evidence would have supported contrary

findings. App., infra, 24a-56a. In the rare instances where

Petitioner did attempt to meet the “clear error” standard, it failed

to supply support that would convince the court that “‘a mistake

had been made”. See United States v. United States Gypsum

Co., 333 U.S. 364, 395 (1948). Now, without having provided

the necessary evidentiary showing for its purported assertions

of clear error, Petitioner seeks to saddle the Federal Circuit with

the burden of including in its opinion an attempt to individually

address and make sense of each of Petitioner’s purported factual

arguments.’ In short, Petitioner is overreaching.

A fair reading of Panduit I] demonstrates that its import

was not to require an explicit scouring of the factual record,

but, rather, to spell out the Federal Circuit’s role in reviewing

factual arguments that are properly before it. In fact, Panduit

II's discussion of this role provides for exactly the situation

that was before the Federal Circuit in the instant case:

If unassailable findings were made but could not

support the appealed judgment under a proper

application of law, an appellate court may vacate or

reverse, but not make its own findings.

810 F.2d at 1565. The district court’s findings of fact

were unassailable — they were established by clear and

convincing -evidence and, pursuant to Federal Rule of Civil

Procedure 53, were adopted by the district court, who praised

the “thoroughness and ability with which the Special Master

has performed his duties.” Pet. App. 9a. Those facts could not

support the district court’s judgment under a proper application

of 35 U.S.C. § 103, and the Federal Circuit properly reversed.

9. The Courts of Appeals have consistently held that they will

not supply the support for a party’s insufficiently articulated arguments.

See Apgar v. State, 2000 WL 1059444, at *8 (10® Cir. Aug. 2, 2000)

(‘Neither the district court, or this Court on appeal, is obligated to comb

the record in order to make Ms. Apgar’s argument’s for her.”); John v.

Barron, 897 F.2d 1387, 1393 (7* Cir. 1990) (“This court is not obligated

to research and construct legal arguments open to parties, especially

when they are represented by counsel as in this case.”’).

——

B. The Federal Circuit Gave Appropriate

Consideration To The Factual Findings Underlying

The Determination On Obviousness.

Petitioner seeks review by this Court due to the absence of

an explicit statement in the Federal Circuit’s opinion that the

findings of fact below were not clearly erroneous.

As the foundation for Petitioner’s claim that the appellee’s

arguments were not heard by the Court of Appeals, Petitioner

clings to the Federal Circuit’s observation that the appellant,

Mead, had not challenged the findings. To make this argument,

Petitioner willfully ignores the express indications that the

Federal Circuit did consider Petitioner’s challenges to the factual

findings, but considered the challenges unworthy of comment.

In its opinion, the Federal Circuit noted that its “task is to

examine the findings related to the factors articulated in Graham

[i.e., the factual inquiries underlying a determination on the

issue of obviousness] and determine whether the district court

erred by deciding that the claims were not obvious as a matter

of law.” Pet. App. 4a (emphasis added). Thus, although the

Federal Circuit’s opinion is brief and to the point, it clearly

indicates that the court examined the findings of fact, as

challenged by Petitioner, before reaching its conclusion that

the district court had erred.

Any doubt in this regard is resolved by examining the

transcript of the oral argument. There, despite the vagueness

and obscurity of Petitioner’s purported assertions of clear error

in its appellee’s brief, the panel affirmatively sought to

understand the extent to which Petitioner alleged that the

findings were clearly erroneous. The court expressly asked

counsel for Petitioner to identify the challenged findings,

App., infra, 68a, and to point to evidence that would support its

allegations of clear error, App., infra, 73a. Finally, the court

even articulated its duty with respect to the review of fact and

law, and counsel for Petitioner agreed with the court’s

articulation of that duty:

THE COURT: Well, do you agree that it’s our duty

now to take a look at those findings and come to a

conclusion ourselves as a matter of law whether

obviousness has been —

MR. MANNING: ... My understanding is that you

do the review de novo, and that in looking at whether

or not Judge Moye was right, I think yes you have

to look at those.

App., infra, 72a. The record makes clear that the Federal Circuit

did consider Petitioner’s attacks on the findings of fact; but, to

Petitioner’s disappointment, it properly considered them

unworthy of serious discussion. Petitioner’s disappointment is

not a basis for a grant of the writ of certiorari.

CONCLUSION

The Petition for a Writ of Certiorari should be denied.

Respectfully submitted,

J. Perer CoLt, Jr.

Counsel of Record

James J. MURTHA

KRISTEN BANCROFT

Orrick, HERRINGTON & SUTCLIFFE LLP

666 Fifth Avenue

New York, New York 10103

(212) 506-5000

Counsel for Respondent

APPENDIX

APPENDIX A — BRIEF OF PLAINTIFF-APPELLEE

RIVERWOOD INTERNATIONAL CORPORATION

DATED JUNE 15, 1999

99-1274

IN THE

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

RIVERWOOD INTERNATIONAL CORPORATION,

Plaintiff-Appellee,

THE MEAD CORPORATION,

Defendant-Appellant.

Appeal from a decision of the United States District

Court For the Northern District of Georgia,

No. 94-CV-90, Entered January 14, 1999,

Senior Judge Charles A. Moye, Jr.

BRIEF OF PLAINTIFF-APPELLEE

RIVERWOOD INTERNATIONAL CORPORATION

Appendix A

WELLINGTON M. MANNING, JR.

Neit C. JONES

CraiG N. KILLEN

Dority & MANNING

700 East North Street, Suite 15

Greenville, South Carolina 29601

(864) 271-1592

Attorney for Plaintiff-Appellee

Riverwood International

Corporation

June 15, 1999

Appendix A

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

Riverwood International Corporation

_ , V. The Mead Corporation

No. 99-1274

Certificate of Interest

Counsel for the Appellee, RIVERWOOD INTER-

NATIONAL CORPORATION, certifies the following:

1. The full name of very party or amicus represented by

me is:

Riverwood International Corporation

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:

Riverwood International Corporation

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: 7

None.

Appendix A

4. The names of all law firms and the partners or associates

that appeared for the party or amicus now represented

by me in the trial court or agency or are expected to appear

in this court are:

Wellington M. Manning, Jr., Neil C. Jones and

Craig N. Killen of Dority & Manning, P.A.

Post Office Box 1449

Greenville, South Carolina 29602-1449

March 15, 1999 s/ Neil C. Jones

Date Counsel for Appellee

[Tables omitted]

STATEMENT OF RELATED CASES

Appellee agrees with the Statement of Related Cases set

forth on page vi of Appellant’s Brief.

Appendix A

IN THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

Appeal No. 99-1274

RIVERWOOD INTERNATIONAL CORPORATION,

Plaintiff-Appellee,

Vv.

THE MEAD CORPORATION,

Defendant-Appellant.

This brief is filed on behalf of Plaintiff-Appellee

Riverwood International Corporation (“Riverwood”) in

response to the Brief of Defendant-Appellant The Mead

Corporation (“Mead”).

STATEMENT OF THE ISSUES

Did the District Court correctly hold that Mead had failed

to prove, by clear and convincing evidence, that claims 1

and 13 of U.S. Patent No. 5,241,806 were invalid for

obviousness?

STATEMENT OF THE CASE

On January 14, 1999, the District Court entered

Judgment in this patent infringement action in favor of

Appendix A

Plaintiff Riverwood. [A9]' The District Court determined

that:

A. Claims | and 13 of Riverwood’s U.S. Patent No.

5,241,806 (“the ’806 patent”) are infringed by

Mead’s accused DuoStack machine;

B. Claims | and 13 of the ’806 patent are not invalid

for obviousness; and

C. The ’806 patent is not unenforceable for inequitable

conduct.

In this Appeal, Mead no longer contests Parts A and C of

the Judgment. Mead has appealed Part B.

The Judgment entered by the District Court followed a

hearing on the parties’ cross motions to bring objections to

a Special Master’s report. The District Court had appointed

the Special Master to receive evidence and arguments on

the liability issues of infringement, validity and inequitable

conduct.’ After a liability trial, the Special Master issued a

1. When making references to the record, Appellee will use the

same convention as used in Appellant’s Brief. A particular page in the

appendix will be set forth in the form “A[#].” A more specific reference

to a Finding of Fact (“FFY”) or Conclusion of Law (“CL”) of the

Special Master, a transcript page (“p.” or “pp.”) or column (“Col.”)

and line number of a patent will often follow the appendix page.

2. The Court ordered that trial of this case would take place in

two phases. The initial trial would address the liability issues, with

the second trial being reserved for the issues of willful infringement

and damages. [A13]

Appendix A

report recommending that Mead’s accused machine infringed

the 806 patent and that the ’806 patent was not unenforceable

for inequitable conduct. The Report also recommended,

however, that claims 1 and 13 of the ’806 patent be held

invalid for obviousness.

Both parties filed objections to certain aspects of the

Special Master’s report. Mead objected to the Special

Master’s recommendation that no inequitable conduct

occurred during prosecution of the ’806 patent;’ and

Riverwood objected to the Special Master’s recommendation

that claims | and 13 be held invalid for obviousness.

After a hearing on the objections, the District Court

issued an Order [A] -A8] upholding and adopting the Special

Master’s finding of infringement of the ’806 patent by

Mead’s DuoStack machine and the Special Master’s rejection

of Mead’s inequitable conduct defense. The District Court

further held that, even accepting the factual findings as found

by the Special Master, Mead did not prove that claims | and

13 of the ’806 patent were invalid.

STATEMENT OF THE FACTS

A. “Two-Stream” v. “Three-Stream”

The ’806 patent relates to a relatively large machine

(referred to as a “cartoner”) for use in an industrial bottling

facility. [A325-A347: A289, pp. 1350-1352; A292,

3. Mead did not bring objections to the portion of the Special

Master's report recommending the finding of infringement.

Appendix A

pp. 1369-1371] The cartoner will continuously load

individual containers*, such as soft drink cans, into open-

ended carton sleeves at high rates of speed. [A289,

pp. 1350-1353] Cartoners typically cost several hundred

thousand dollars or more, and are located downstream of

other machinery used to fill and close the individual cans.

{[A277, p. 1280; A289, pp. 1352-1353] The can filling and

closing machinery feeds a mass of cans to the cartoner on a

conveyor mechanism. [A289, pp. 1352-1353] The cartoner

divides the mass of cans into predetermined numbers of cans

for loading into cartons sleeves, which are normally made

of paperboard. [A284, pp. 1321-1322; A277, pp. 1280-1281]

After loading the cans, flaps on the carton sleeves are closed

and glued shut. The closed cartons are then discharged from

the cartoner. [A284, pp. 1321-1322]

The terms “two-stream” cartoner and “three-stream”’

cartoner are used throughout the record of this case. Thus, a

certain amount of explanation as to the meaning of these

terms is necessary for determining the issues in this case.

Riverwood, relying on the express language of Claims

1 and 13 of the ’806 patent, uses these terms as a shorthand

way to differentiate between two very different types of

cartoners. A “two-stream” cartoner is a machine having two

adjacent conveyors that function to load cans into one or

both sides of an open-ended carton sleeve. [E.g., AS24-A544;

A495-A507; A517-A523] In other words, only two separate

4. Though cartoners made according to the ’806 patent may

handle bottles, cans, etc., cans are used in the discussion of the

machine.

Appendix A

and distinct conveyors are used to feed, select and load the

cans, as well as to carry the open-ended carton sleeves which

are loaded and subsequently discharged from the machine.°

[A285, pp. 1324-1325: Al 777) An example of a two-stream

cartoner is the one shown in U.S. Patent No. 4,237,673 to

Calvert. [A478-A485]

A “three-stream” cartoner, on the other hand, uses three

separate and distinct conveyors that are placed adjacent to

one another in a predetermined arrangement. [A284-A285,

pp. 1319-1324; A290, p. 1359: A1778) Although Mead

vigorously argued at trial that a cartoner having only two

separate conveyors could be considered a “three-stream”

cartoner, this view was rejected by the Special Master.

Instead, the Special Master agreed with Riverwood that

“a three-stream system” for purposes of this litigation is a

System which has “three separate conveyors.” [A36,

CL ¥ 22]

At trial, Mead presented only one prior art cartoner

reference showing a “three-stream system” — U.S. Patent

No. 3,778,959 (“Langen "959”). [A457-A465] Langen ’959,

however, was cited to the Examiner by the applicants during

prosecution of the ’806 pateni and was discussed as

background in the ’806 patent itself. [A413; A339, col. 1,

5. Most two-stream machines load from both sides, so that the

machine has a symmetrical structure with two infeed conveyors

located on opposite sides of a carton conveyor. [E.g., A478-A485]

Other two-stream machines load from one side only.

[E.g., AS17-A523] Thus, for purposes of this case, the number of

streams is determined by counting the number of conveying streams

on one side of the machine only.

10a

Appendix A

lines 53-62] Contrary to Mead’s assertions that three-stream

machines were “well known” (see, e.g., page 12 of Mead’s

Brief), there is no evidence that Langen ’959 was “well

known” or widely used in the industry. In fact, Langen ’959

is the only three-stream cartoner described in the 24 prior

art patents that were listed as exhibits for trial.°

B. The ’806 Patent

Claims 1 and 13, the only claims at issue in this case,

recite a cartoner in which three separate and distinct

conveyors are used in combination with a barrel cam loader

mechanism to load containers into open-ended carton sleeves.

The articles are brought into the machine on an infeed

conveyor having a plurality of article guide lane structures

located above it. [A341, col. 5, lines 52-62] The guide lane

structures are intersected by transversely fixed flight bars

carried on a second conveyor. [A341, col. 5, line 66 through

col. 6, line 26] The flight bars separate the cans into groups

which will ultimately be loaded into the carton sleeves.

[A341, col. 6, lines 18-26] The flight bar conveyor is part of

the “article selecting conveyor” referred to in the ’806 patent

which is used to select the articles (typically cans) into groups

having a predetermined number. The open-ended carton

6. A machine referred to as an APV Douglas Continuous Wrap

Machine was listed as an exhibit but was not urged at trial. This

machine utilized a number of streams including a pin selector stream,

a stream of buckets and a stream of flat wraps for encasing the groups

of articles. A barrel cam loader was used to push the articles from

the pin-selector groups into the buckets. Then, a second barre] cam

loader was used to push the articles from the buckets into position

for wrapping.

lla

Appendix A

sleeves move along a third conveyor, referred to as a “carton

supply conveyor,” which is located adjacent and parallel to

the article selecting conveyor. [A342, col. 7, lines 52-59]

The can groups are pushed into open-ended carton sleeves

by the barrel cam loader mechanism. [A342, col. 8, lines

33-45] The loaded cartons continue on the carton supply

conveyor to a gluing station where the carton flaps are closed

and glued and then finally toa discharge mechanism. [A341,

col. 5, lines 26-30]

As Mead indicated in its Brief, the invention set forth in

claims | and 13 of the ’806 patent is embodied in

Riverwood’s Twin-Stack machine. [Mead’s Brief, p. 6] As

found by the District Court, and no longer disputed by Mead,

the invention of claims | and 13 is also embodied in Mead’s

infringing DuoStack machine. [A9]

C. The Prosecution History of the ’806 Patent Demonstrates

the Patentability of Claims 1 and 13

According to Mead, the “only relevant inquiry” is

whether it would have been obvious to substitute a barrel

cam loader loading mechanism, such as that shown in

U.S. Patent No. 4,936,077 (“Langen ’077”) [A517-A523],

for the stationary guide rail loading structure shown in the

three-stream machine of Langen 959.’ [Mead’s Brief, p. 7]

Both a barrel cam loader and a Stationary guide rail loading

structure will ultimately load a plurality of cans into a carton

7. Riverwood does not agree that this is the “relevant inquiry”

as explained below in the Argument section of this Brief. The

“relevant inquiry” is whether the invention, as a whole, would have

been obvious to one of ordinary skill in the art. 35 U.S.C. § 103(a).

12a

Appendix A

sleeve. However, as explained later, the two loading

Structures are very different both structurally and

functionally. Because Langen ’959 and Langen ’077 were

both of record during prosecution of the ’806 patent, the

propriety of this specific combination was undoubtedly

considered by the Examiner. The Examiner found the

invention of claims 1 and 13 to be patentable over these

references and all other references of record.

1. Summary of the Prosecution History

Before the Examiner acted on the application resulting

in the ’806 patent, the applicants submitted an Information

Disclosure Statement (“IDS”) informing the Examiner of five

prior art patents of which they were aware. [A410-A413]

The five patents listed by the applicants on the PTO Form

1449 submitted with the IDS were: (1) Langen ’959;

(2) Calvert ’673; (3) U.S. Patent No. 4,802,324 to Everson

(“Everson ’324”) [A508-A516]; (4) Langen ’077; and

(5) U.S. Patent No. 5,036,644 to Lashyro (“Lashyro”’)

[A545-A555]. Copies of the five references were also

provided to the Examiner, in accordance with Patent Office

requirements. [A410]

The Patent Office issued only one Office Action during

prosecution of the application that resulted in the ’806 patent.

[A405-A408] The file history indicates that the Examiner

performed a search of the prior art, as he is required to do.

[A456] As a result of this search, the Examiner found other

patents that he believed were relevant to the application.

Those other patents are: (1) U.S. Patent No. 4,982,551 to

Nigrelli (“Nigrelli °551”) [A524-A544]; (2) U.S. Patent No.

l3a

Appendix A

5,072,573 to Tisma (“Tisma ’573”) [A556-A573]; (3) U.S.

Patent No. 4,693,055 to Olsen, Jr. (“Olsen °055”)

[A495-A507]; (4) U.S. Patent No. 4,250,693 to Andersson

(“Andersson 693”) [A486-A494]; and (5) U.S. Patent No.

3,956,868 to Ganz (“Ganz "868”) [A466-A477].

In the Office Action, the Examiner rejected some of the

Original claims as anticipated by Nigrelli ’551, some of the

Original claims as anticipated by Olsen ’055, and some of

the original claims as anticipated by Calvert ’673. In addition,

original claims 13-15 were rejected under 35 U.S.C. § 103

as obvious over Nigrelli 551 in view of Langen ’077.

Likewise, original claims 18-20 were rejected as being

obvious over Nigrelli 551 in view of Tisma "573. Although

the Examiner did not use Langen ’959 as a basis for rejecting

the claims, the Examiner, by initialing each submitted

reference listed on the PTO 1449 form, indicated that he had

reviewed it and the other prior art submitted to the Patent

Office by the applicants. [A413]

In the rejection of claims 13-15 as being obvious over

Nigrelli °551 in view of Langen ’077, the Examiner stated:

It would have been obvious at the time applicant’s

invention was made to a person of ordinary skill

in the art to provide the apparatus of Nigrelli, Sr.,

with cam-driven article pushers, as taught by

Langen et al [077] because that would provide a

more positive transfer of the articles into the

carton. [A407]

_—

l4a

Appendix A

In response to the Examiner’s rejections made in the

Office Action, the applicants amended claim 1 and canceled

claim 13.* [A418-A419; A421] In the amendment, the

invention of the ’806 patent was distinguished over the

“references cited by the Examiner” on the basis of “particular

structure for the article infeed means, article selecting means,

carton supply means and the article group transfer means”

and further on the basis that these “components be aligned

in a particular orientation with respect to each other.” [A425]

The applicants distinguished the prior art on the basis that it

did not show a “side loading mechanism” in combination

with a three-stream device and that the addition of a “side

loading mechanism” to any of the two-stream devices would

still yield a “two-stream device.” In making the distinguishing

arguments, the applicants stated:

Additionally, no combination of these references

[referring back to Nigrelli ’551, Calvert ’673 and

Olsen ’055], or Langen [’077], Tisma, or the cited

[by the Examiner] but unapplied art, fully meets

the invention as now claimed in claim 1. For

example, the addition of a side loading mechanism

as shown in Langen [’077] to the basic two stream

devices shown in Nigrelli, Olsen or Calvert [’673]

would still yield a two stream device. None of

the cited art [by the Examiner] shows or suggests

a structure which selects raw infeed articles from

a first stream, and then forms article groups in a

8. Amended claim 1 of the application eventually became claim

1 of the 806 patent and original claim 14 of the application became

claim 13 of the ’806 patent.

15a

Appendix A

second and distinct second stream prior to loading

into a third stream of cartons. [A426 (explanatory

terms as found by the Special Master added) ]°

The applicants also argued that “Claim 1, in addition to being

free of any single reference, is also believed to be unobvious

Over the cited prior art as a whole” and that “amended

independent Claims 1 and 22 and new Claims 23 and 24 are

patentable over the art of record.” [A426; A427]

After consideration of the amendments and arguments

set forth in applicants’ amendment, the Examiner withdrew

the rejections and allowed the application, as amended, to

issue as the ’806 patent. [A429]

2. The Most Relevant Prior Art Was Known to the

Examiner During Prosecution of the ’806 Patent

The prosecution history shows that the Examiner

considered a wide variety of references before determining

that the claims of the °’806 patent were patentable over the

prior art. For example, the prior art considered by the

Examiner shows various article loading devices. In some of

9. Mead seems to argue in its Brief at page 19 that the 806

inventors misled the Examiner by “shift[ing] the Examiner’s focus.”

appeal. The Special Master found that use of the “cited art” term

was not misleading, and that this term specifically did not include

Langen °959. [A28, FFY 57; A29, FF 61-62; A44 CL] 60]

se i A NOPE

l6a

Appendix A

these references, the individual articles are loaded by being

directed along fixed guide rails into the open-ended carton

sleeves. [E.g., A478-A485] In others, article groups are

loaded by being pushed into the carton sleeve using a barrel

cam loader mechanism. [E.g., A517-A523]

In addition, the prior art that was considered by the

Examiner shows various article selecting mechanisms. Some

of the references show the use of flight bars to form article

groups [e.g, A517-A523], and some references use other

techniques (such as pins or screws) to separate individual

articles into groups. [A524-A544; A495-A507]

The prior art considered by the Examiner during

prosecution of the ’806 patent is summarized in the following

Table.

17a

Appendix A

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18a

Appendix A

As the Table shows, all of the individual elements of patent

claims | and 13 are shown in this prior art. In fact, Riverwood

stipulated at trial that all of the individual elements of claim 1

were shown in two prior art references — Langen ’959 and

Langen ’077. [A135, p. 433; A143, pp. 480-482] Those

references, however, were considered by the Examiner in

arriving at his conclusion of patentability.

D. The Invention of the ’806 Patent Achieves a Unique

Cartoning Machine Having Many Advantages

Like Mead’s Brief, the Special Master’s report contained

no discussion of why one of ordinary skill in the art would

be motivated to use a “three-stream” device in the first place.

Langen ’959, the only prior art reference urged by Mead

that shows a three-stream cartoner, was also the oldest

reference cited during the prosecution of the ’806 patent. In

addition, the three-stream concept used in Langen ’959

apparently lost favor with one of its own inventors, Marinus

Langen. Although Mr. Langen used a barrel cam loader in

his later cartoning device (shown in Langen ’077), he moved

away from the three-stream concept to the common two-

stream concept. [A517-A523]

The inventors of the 806 patent ultimately invented a

cartoner utilizing a “three-stream” arrangement with a barrel

cam loader. In arguing for invalidity, Mead would have this

Court believe that a three stream cartoner was common and

that the choice between using a barrel cam loader and an

angulated guide is a “simple design choice” that is “regularly

19a

Appendix A

made by carton designers”. [Mead’s Brief, p. 9]'' Nothing

‘ could be further from the truth.

Substantial evidence was presented at trial as to why

someone of ordinary skill in the art would not be motivated

“to do what the ’806 inventors did. For example, even if one

were to choose to use a three-stream cartoner from among

the prior art in evidence (which, with the exception of Langen

°959, shows only two-stream or one-stream cartoners),

replacement of the fixed guide rails with a barrel cam loader

would result in a machine that:

1. is longer and wider;

2. has more moving parts;

3. is more difficult to maintain;

4. is more costly to build; and

5. is more complicated than a carton loader

employing angled guides.

[A139-A140, pp. 458-460; A141-A142, pp. 471-473; A315,

p. 1502] These disadvantages of adding a barrel cam loader

in place of the fixed guide rails in the three-stream machine

are important considerations to both machine designers who

11. For this proposition, Mead cites the testimony of its

engineer who designed Mead’s infringing DuoStack machine.

A simple review of that testimony [A149, pp. 513-14] fails to indicate

> “

any support for Mead’s “simple design choice” statement.

20a

Appendix A

design and build cartoners and to the customers who purchase

the machines. [A155, pp. 546-551]

Despite these disadvantages, the invention of the ’806

patent achieves a number of advantages, including:

Due to the use of three separate conveyors in

conjunction with a barrel cam loader, Riverwood’s

Twin-Stack machine (i.e., the commercial machine

admittedly embodying the ’806 invention) is

extremely flexible so that it can efficiently run

various package configurations. [A291, pp. 1360-

1363, A292, p. 1470]

In the resulting machine, cartons can be glued and

closed on the same conveyor upon which the cartons

are carried as they are loaded with articles. [A286,

pp. 1331-1333] This ability to maintain control over

the carton throughout the entire can loading, and

filled carton-discharging process is important from

a carton-handling standpoint. In addition, this

feature, which is not possible with two-stream

cartoners having a combined flight bar and carton

conveyor such as the machine shown in Calvert ’673

[A478-485], is a feature that is touted by Mead to its

customers. [A152, pp. 531-32, A286, pp. 1332]

. The resulting machine will typically take less time

to change over between the running of various

package sizes. [A285-A286, pp. 1329-1330] |

The barrel cam loader can be designed (and has been

in the Twin-Stack machines) to decrease the speed

2la

Appendix A

of the loading head as it approaches the product group

so that the initial contact between the head and the

group is gentle and will not result in tipping or article

damage. [A285, pp. 1328-1329]

5. The use of separate conveyors allows the speed of

the infeed conveyor relative to the speed of the

remainder of the machine to be increased. This allows

for proper loading of cans into cartons at the industry-

desired rates of speed. [A291, pp. 1363-65]

In the context of these advantages, the invention of the

"806 patent becomes evident. The advantages result from

the unique combination that the Examiner found to be

patentable and that Mead found necessary to use in their

infringing DuoStack machines.

E. The Invention of the ’806 Patent Has Been Commercially

Successful |

Even though the Special Master concluded (erroneously)

that there was insufficient nexus between the commercial

success of the Twin-Stack machine and the invention of the

"806 patent, the Special Master did find nexus.'* [A27,

FF452] In fact, commercial success by both the Riverwood

and Mead machines that embodied the ’806 patented

invention was well-documented during the trial of this matter.

For example, the record showed that Riverwood has

leased 100 Twin-Stack machines to customers. [A277,

12. Mead erroneously states that the Special Master found no

nexus. [Mead’s Brief, p. 22]

22a

Appendix A

p. 1278] In addition, Mead has leased approximately

33 DuoStack machines. [A277, p. 1278] In many cases, both

the Twin-Stack and DuoStack machines replaced prior art

two-stream Mead DuoDozen machines in customers’

facilities. [A1655-A1666; A1856, pp. 182-84]

Gordon Wilkinson, a Riverwood corporate officer who

had been in the packaging industry since 1967, testified that

the Twin-Stack machine was “the single-most-important

innovative packaging system that [he had] ever seen in the

industry.” [A275, p. 1269; A277, p. 1278] Mr. Wilkinson

explained that in 1992, prior to commercialization of the

Twin-Stack machine, Riverwood’s annual gross sales in the

soft drink industry totaled $64 million and in the beer

industry totaled approximately $137 million. [A277, p. 1279]

By 1996, after introduction of the patented Twin-Stack

machine, Riverwood’s revenues from the soft drink industry

had almost tripled to approximately $157 million and in the

beer industry had nearly doubled to $243 million. [A277,

p. 1279] Because of the Twin-Stack machine, Riverwood’s

production of paperboard (for making the cartons to be run

on its cartoning machines) had increased from approximately

112,000 tons per year in 1992 to 204,000 tons at the time of

trial. [A277, p. 1279]

The importance of the invention embodied in the

Twin-Stack machine is further supported by the dramatic

growth in market share enjoyed by Riverwood after the

Twin-Stack machine was introduced. For example, before

Riverwood began leasing Twin-Stack machines in 1992,

Riverwood’s market share in the U.S. soft drink industry

was approximately 30-31 percent. [A278, pp. 1282-83]

23a

Appendix A

By 1996, that market share had increased to approximately

48-49 percent. [A278, p. 1283] By the time of trial in October

1997, that market share had further increased to

approximately 52-53 percent. [A278, p. 1283] Pepsi-Cola

was so impressed by the patented three-stream Twin-Stack

machine that Riverwood’s U.S. market share with this one

customer jumped from approximately 10 percent to

approximately 80-82 percent. (A278, p. 1282]

F. The District Court’s Order

As discussed above, the Judgment in this case is based

on an Order [A1-A8] issued by the District Court after

hearing the parties’ objections to the Special Master’s report.

Contrary to Mead’s arguments, the analysis set forth in the

Order is very clear and correctly concludes that claims 1

and 13 of the ’806 patent were not proven to be invalid.

The Order begins by noting that factual findings of the

Special Master must be accepted unless they are clearly

erroneous. Because none of the factual findings were found

to be clearly erroneous by the District Court, they were

accepted.'’ [A3] The District Court then recognized that the

13. Riverwood does believe that a number of the Special

Master’s factual findings are clearly erroneous and most of those

erroneous findings are discussed herein. However, Riverwood

believes that, even under the facts as found by the Special Master,

claims 1 and 13 of the ’806 patent have not been proven invalid. As

this Court has often said, it “sits to review judgments, not opinions.”

Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540, 218

U.S.P Q. 871, 880 (Fed. Cir. 1983). Here the judgment finding that

the *806 patent has not been proven invalid is the correct outcome,

despite any errant findings of fact.

24a

Appendix A

issue of obviousness is a question of law for which no such

deference is due. [A3-A4]

The District Court began by discussing the prosecution

history of the ’806 patent. The District Court explained that

the Patent Examiner, in rejecting original claim 1, believed

that the use of a barrel cam loader as applied to a two-stream

device was obvious. [A5] The District Court contrasted this

with the Examiner’s finding that a barrel cam loader as

applied to the three-stream device set forth in amended claim 1

was not obvious. [A5] _

The District Court further stated that Mead’s evidence

of substituting a barrel cam loader for an angulated guide-rail

structure “did not involve a three-stream” device. [A5] Thus,

“(t]he critical issue then became whether that step [of

substituting a barrel cam loader for an angulated fixed guide

in a three-stream loader] also would have been obvious to a

person of ordinary skill in the art.” [A5-A6] (emphasis in

original) The Court specifically rejected the Special Master’s

conclusion that “the obviousness of substituting a barrel cam

loader would be as apt for a three stream cartoner as a two

stream cartoner.” [A6-A7] The Court found insufficient

evidence on this critical issue to support 2 conclusion that

claims 1 and 13 of the ’806 patent had been proven invalid

by clear and convincing evidence. [A7]

SUMMARY OF THE ARGUMENT

Mead’s arguments against validity of the ’806 patent

avoid the real issue in this case — whether one of ordinary

skill in the art would have been motivated by the prior art to

25a

Appendix A

first choose a three-stream cartoner from among the various

prior art references and to then modify the only three-stream

cartoner among the prior art by replacing angled guides with

a barrel cam loader. Instead, Mead attempts to lead this Court

away from that real issue by arguing that+the District Court

did not understand and did not properly apply the clear and

convincing evidence standard. Mead Says that it was required

to meet the clear and convincing standard twice — first on

its factual proofs and then on its legal burden.

However, a close reading of the District Court’s Order

makes clear that the Judge understood and applied the correct

standard in assessing the evidence presented at trial. The

District Court carefully reviewed the evidence presented and

the factual findings found by the Special Master and

determined that the Special Master’s conclusion that

obviousness would be as “apt” in the claimed three-stream

cartoner as it was in the context of a two-stream Cartoner

was not proper in light of the clear and convincing evidence

standard. Instead, the District Court recognized, as did the

Patent Examiner who issued the ’806 patent, that although

the use of a barrel cam loader in a two-stream cartoner was

shown in the prior art, there had been no clear and convincing

showing that one of ordinary skill in the art would be

motivated to employ a barrel cam loader in a three-stream

device. This was a proper application of the correct legal

standard.

Contrary to Mead’s arguments, Riverwood’s stipulations

admitting that all elements of the ’806 patented invention

were present in the prior art, and in fact were contained in

two prior art references — the Langen 959 and the Langen

26a

Appendix A

077 patents — does not mean that the claimed invention is

obvious. It merely means that, like most inventions, the ’806

patented cartoner “could” have been made by taking pieces

of the prior art and putting them together in one device.

However, to say that an invention could have been made is

not the same as saying that an invention would have been

made by one of ordinary skill in the art when the art is

considered as a whole. Mead would have this Court declare

a valuable patent invalid based on this improper “could have

made” standard.

In addition, Mead, like the Special Master, believes that

the Patent Examiner simply missed the Langen ’959

three-stream cartoner patent when allowing the 806 patent

to issue. This belief flies in the face of case law holding that

an Examiner is presumed to do his or her job, which includes

the consideration of the art of record, particularly when, as

here, the Examiner actually indicates that the reference was

considered.

The Examiner clearly knew what he was doing here. He

realized that he was considering the patentability of a three-

stream cartoner that utilized a barrel cam loader. He also

knew that, like Riverwood admitted in its stipulations, the

prior art before him had all the elements of the claimed

invention. In addition, he presumedly understood that just

two references, the Langen ’959 patent and the later Langen

’077 patent, actually disclosed all of the elements. But then,

he likely recognized that the specification of the earlier

Langen ’959 three-stream cartoner patent actually

discourages the use of a barrel cam loader and describes

angled guides as an “improvement” over barrel cam

27a

Appendix A

loading-type devices. He obviously believed, as the District

Court concluded, that although the prior art showed two-

stream cartoners with barrel cam loaders, the use of a barrel

cam loader in a three-stream cartoner would not have been

an obvious choice for a cartoning machine based on the prior

art as a whole.

While the Examiner had only the prior art to consider,

the District Court, and now this Court, has the benefit of

real world facts that further support the nonobviousness of

the ’806 invention. For example, both Riverwood and Mead

considered several alternative designs before arriving at the

ultimate designs which both, admittedly, embody the ’806

invention. Riverwood considered three alternative two-

stream designs and Mead considered at least five different

designs. This should be substantial evidence that cuts against

a finding of obviousness. However, Mead attempts to use

Riverwood’s development of the °806 invention against

Riverwood by arguing that the fourth and final three-stream/

barrel cam loader-design was the only combination that had

not been tried and that some of the other designs were

dropped due to non-technical reasons. Even if it were true

that the invention was the only remaining combination

(which it was not) and that Riverwood had dropped all three

earlier designs for reasons other than operational

considerations (which it did not), Mead is statutorily

prohibited from using Riverwood’s invention development

Process to negate the 806 invention. There is no similar

statutory prohibition, however, against considering the

development process in Riverwood’s favor to support

patentability. Thus, this real world evidence supports

upholding the District Court’s Judgment.

, es

28a

Appendix A

In addition, this Court now has the benefit of considering

what happened in the marketplace after the machines

embodying the ’806 invention were introduced. Since its

introduction, Riverwood has leased 100 of its Twin-Stack

machines and Mead has leased 33 of its infringing DuoStack

machines. These _machines, which typically cost several

hundred thousand dollars each, have replaced a number of

prior art machines in bottling/canning facilities. These

machines, which have been described as the “single-most-

important innovative packaging system” in the industry in

more than 30 years, allowed Riverwood to increase its market

share in the soft drink industry from approximately

30 percent to approximately 50 percent. In addition, these

machines allowed Riverwood’s revenue from the soft drink

industry to nearly triple (to $157 million) and from the beer

industry to nearly double (to $243 million).

While the Special Master did find nexus between the

806 patent and Riverwood’s Twin-Stack machine but found

that it was “insufficient”, Riverwood believes that this

finding is clearly erroneous and was based on an incorrect

understanding of the law. The Special Master found sufficient

nexus lacking because four other Riverwood patents showed

features of the Twin-Stack machine and because the

Twin-Stack machine was not the sole source of the

commercial success. However, the fact that other patents

show features of a commercial successful machine does not

prevent a finding of sufficient nexus. In addition, ample

testimony was presented at trial to show that the advantages

of the Twin-Stack machine realized by customers were based

directly on the use of the claimed three-stream cartoner

with a barrel cam loader. Moreover, even if some of the

29a

Appendix A

commercial success was due to the package design as Mead

argues, the law does not require that the patented device be

solely responsible for all of the commercial success.

Not to be discounted here is also the fact that Mead

copied Riverwood’s patented Twin-Stack machine. Although

the Special Master recognized that the circumstances “would

tend to support evidence of copying,” he found that there

was “no evidence that the Mead DuoStack was a copy of the

Twin-Stack machine.” The Special Master obviously

required direct evidence of copying before allowing this

secondary consideration to be found. The case law, however,

allows copying to be proven by circumstantial evidence.

ARGUMENT

As this Court has stated many times, patents are born

valid. “When, as here, the sole challenge is an allegation of

obviousness, the presumption is that the invention would

not have been obvious.” Panduit Corp. v. Dennison

Manufacturing Co., 810 F.2d 1561, 1570, 1 U.S.P.Q.2d 1593,

1599 (Fed. Cir. 1987). In order to prevail, the challenger

must prove invalidity of the relevant claims by clear and

convincing evidence. The Gillette Co. v. S.C Johnson & Son,

Inc., 919 F.2d 720, 722, 16 U.S.P.Q.2d 1923, 1926 (Fed.

Cir. 1990). In this case — as the District Court correctly

found — Mead failed to meet this considerable burden.

A. The District Court Applied the Correct Legal Standard

The cornerstone of Mead’s attack in this appeal is an

€rroneous assumption that the District Court somehow

30a

Appendix A

“stumbled” over the meaning and application of the statutory

presumption of patent validity. Mead argues that the District

Court required Mead to meet two clear and convincing

thresholds. First, Mead says the District Court found that

facts supporting obviousness had been proved by clear and

convincing evidence. Then, says Mead, the District Court

subjected the legal conclusion of obviousness to a second

clear and convincing threshold. [Mead’s Brief, p. 26] The

text of the District Court’s Order, however, clearly shows

that the District Court properly considered the evidence

against the appropriate standard.

Citing Graham v. John Deere, 383 U.S. 1, 148 U.S.P.Q.

459 (1965), the District Court noted that the ultimate

determination of obviousness is one of law based on underlying

factual determinations. [A3-A4] The Examiner, noted the

District Court, had determined that the combination of a barrel

cam loader with a three-stream device would not have been

obvious. [A5] Thus, to overcome the presumption of validity,

the evidence needed to show clearly and convincingly that

this specific combination would have been obvious.

The Special Master never addressed in his Report the

critical issue of whether the substitution of a barre! cam

loader for an angulated guide in a three-stream cartoner

would have been obvious, as whole, to one of ordinary skill

in the art. Instead, the Special Master merely concluded that

“the obviousness” would be “as apt” in a three-stream

cartoner as in a two-stream cartoner. [A7] The District Court

determined, however, that the evidence on the critical issue

of employing a barrel cam loader in a three-stream cartoner

was simply not clear and convincing. [A7] This was a proper

application of the correct legal standard. m

3la

Appendix A

B. The Invention Would Not Have Been Obvious to One

of Ordinary Skill in the Art

Despite the fact that Mead found the invention important

enough to use in its 33 DuoStack machines, Mead argues

that claims 1 and 13 would have been obvious in view of

two references that were considered by the PTO during

prosecution of the ’806 patent. Mead’s argument, like the

Special Master’s decision, fails to give proper deference to

the Patent Examiner. Instead, Mead contends that this Court

should look to how the invention was made, consider additional

prior art showing certain “key pieces of information,” and

disregard the secondary considerations that were shown by

the evidence. In addition, Mead relies heavily on

Riverwood’s stipulations at trial that all of the elements of

the claimed invention were present in the prior art.

In this case, the evidence simply does not support Mead’s

position. The primary references that Mead asserts as

rendering the ’806 patent invalid — Langen ’959 and Langen

’077 — were actually considered by the Examiner. In addition,

all of the examples cited by Mead (and the Special Master) to

show the use of a barrel cam loader are two-stream cartoning

machines. These include the Langen ’077 patent, the LeBras

"139 patent, and the Pillsbury machine. All of these two-stream

machines came about long after the three-stream Langen ’959.'4

14. Moreover, as with many of the other factual findings, the

Special Master merely concluded that the operation of the Pillsbury

machine was “evidence” and not “clear and convincing” evidence.

{A23, FF] 36] In fact, at the time of the 806 invention, the Pillsbury

machine was no longer utilizing a barrel cam loading-type device

to load individual cans into cartons. [A1457-A 1459; A1464-A1466]

32a

Appendix A

The cases that Mead cites do not support their position

either. Ryko Mfg. Co. v. NuStar, Inc., 950 F.2d 714, 21

U.S.P.Q.2d 1053 (Fed. Cir. 1991), for example, is easily

distinguishable from the present case. The claim at issue in

Ryko was directed to the combination of a “common”

automatic car wash system and a keypad activation device.

The keypad activation device was used in lieu of a

mechanical coin box utilized in the prior art. Unlike Ryko,

there is no evidence in this case that the three-stream cartoner

of Langen ’959 was “common.” In addition, equipping the

three-stream system cartoner of Langen ’959 with a barrel

cam loader mechanism would be far more involved than

merely substituting a new activation device for an old one,

and would result in an entirely new machine. If this were

not the case, both Riverwood and Mead would have

immediately gone to their ultimate three stream/barrel cam

loader designs instead of first going through all the various

alternative machines as described below. Presumably, it was

not necessary to make any mechanical modifications to the

actual car wash equipment in Ryko in order to substitute a

keypad activation device for a coin box activation device.

Here, the prior art as a whole had clearly moved away

from the concept of a three-stream device. The inventors of

the ’806 patent did not merely use a barrel cam loader, but

also employed a three-stream concept that was out of favor

in the art. The prior art must suggest the desirability of

making the combination in order for the patent claims to be

held invalid. Alco Standard Corp. v. Tennessee Valley

Authority, 808 F.2d 1490, 1498, 1 U.S.P.Q.2d 1337, 1343

(Fed. Cir. 1986). Neither the original prior art considered by

the Examiner nor the cumulative prior art advanced by Mead

provides the necessary suggestion.

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33a

\ Appendix A

Moreover, it is irrelevant to the obviousness inquiry that

“all of the elements of an invention may have been old (the

normal situation), or some old and some new, or all new.”

Environmental Design, Ltd. v. Union Oil Co., 713 F.2d 693,

698, 218 U.S.P.Q. 865, 870 (Fed. Cir. 1983). “Casting an

invention as ‘a combination of old elements’ leads

improperly to an analysis of the claimed invention by the

parts, not by the whole.” Custom Accessories Inc. v. Jeffrey-

Allan Indus., Inc., 807 F.2d 955, 959, 1 U.S.P.Q.2d 1196,

1198 (Fed. Cir. 1986). “Focusing on the obviousness of

substitution and differences, instead of on the invention as a

whole, is a legally improper way to simplify the often

difficult determination of obviousness.” Gillette Co., 919

F.2d at 724, 16 U.S.P.Q.2d at 1927. -

1. Langen ’959 Discourages One Of Ordinary Skill

_ in the Art From Making the Claimed Invention

Mead confuses the relevant inquiry by arguing that

Langen 959 “itself indicated that a barrel cam loader could

be used with a cartoner.” [Mead’s Brief, p. 37] Riverwood

does not dispute that a barrel cam loader could be used with

“a cartoner,” because barrel cam loaders were shown in at

least three of the cartoner patents considered by the Examiner

during prosecution of the ’806 patent.'® Instead, the issue is

whether the specific combination set forth in claims 1 and

13 would have been obvious, as a whole, to one of ordinary

skill in the art.

15. The patents showing barrel cam loaders included Andersson

"693 [A486-A494], Langen °077 [A517-A523], and Tisma °573

[A556-A573].

34a

Appendix A m

Contrary to Mead’s position, Langen 959 would actually

leac one of ordinary skill the art away from the arrangement

of claims 1 and 13. The specification of Langen ’959

contrasts its machine with prior art machines that employed

a “complex escalator type mechanism” (which is equivalent

to a barrel cam loader). [A460, col. 1, lines 46-60] Langen

959 explains that “(t]he use of stationary guide rails to guide

the containers transversely of the conveyor also provides a

substantial improvement over the elaborate escalator devices

previously employed.” [A463, col. 7, lines 26-29]

Where the closest prior art reference would “likely

discourage the art worker from attempting the [suggested]

substitution,” substantial evidence of nonobviousness is

provided. The Gillette Co., 919 F.2d at 724, 16 U.S.P.Q.2d

at 1927; see also In re Fine, 837 F.2d 1071, 1074,

5 U.S.P.Q.2d 1596, 1599 (Fed. Cir. 1988) (claim not invalid

where primary reference “warns against rather than teaches”

the claimed invention). Even if not considered a “teaching

away” in the strict sense, “conventional wisdom that a

combination should not be made is evidence of

unobviousness.” Arkie Lures Inc. v. Gene Larew Tackle Inc.,

119 F.3d 953, 958, 43 U.S.P.Q.2d 1294, 1297 (Fed. Cir.

1997); see also Monarch Knitting Mach. v. Sulzer Morat

GmbH, 139 F.3d 877, 885, 45 U.S.P.Q.2d 1977, 1984 (Fed.

Cir. 1998) (general skepticism of those in the art is relevant

and persuasive evidence of nonobviousness).

In re Gurley is not to the contrary. This Court in Gurley

recognized that “teachings away” are “significant factor[s]”

for consideration in obviousness determinations when the

“nature of the teaching” so dictates. Jn re Gurley, 27 F.3d

35a

Appendix A

551, 553, 31 U.S.P.Q.2d 1130, 1132 (Fed. Cir. 1994). Here,

the nature of the teaching from Langen ’959 is that barrel

cam loading-type mechanisms had been employed previously

in two-stream cartoners and Mr. Langen invented a new

cartoner (three-streams) which employed an improved

angulated guide. This indicates that one looking to develop

another three-stream cartoner would be discouraged from

using a barrel cam loading mechanism. In addition, in Gurley,

the Court recognized that Gurley’s invention did not offer

“improved properties”. /d. Here, in contrast, numerous

improvements result from the combination of a three-stream

cartoner and a barrel cam loader.

Rather than following the applicable precedent, the

Special Master concluded that statements in Langen ’959

teaching against the use of a barrel cam loader are “a

recognition of the obviousness of a barrel cam loader not

evidence of unobviousness.” [A40, CL938] This is simply a

misinterpretation of the statements in Langen ’959.

2. Mead’s Additional “Key Information” Is Merely ~

Cumulative to the Art of Record

Mead argues at page 20 of its Brief that the Examiner

did not have “the benefit of several key pieces of

information.” The first two “key pieces of information,”

however, relate to stipulations made at trial by Riverwood

about what Langen °959 teaches and about the resulting

structure formed from a combination of Langen ’959 and

Langen ’077. The remaining “key pieces of information”

relate to art that was not before the Examiner, but there is no

finding in the record of this case that the additional prior

36a

Appendix A

art is more relevant than the art that was considered by

the Examiner.

In order to ease the burden on the challenger to validity,

any new prior art advanced in litigation must be more

pertinent than the prior art that was considered by the PTO.

W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553,

220 U.S.P.Q. 303, 313 (Fed. Cir. 1983). There has been no

finding, and Mead cannot reasonably argue, that the “key

information” is more relevant than the Langen ’©59 patent

and the Langen ’077 patent.

Mead finds remarkable Riverwood’s stipulation that

Langen ’959 is a three-stream device having elements

a through c of claim 1. Mead also attempts to make hay of

Riverwood’s stipulation that, if the barrel cam loader of

Langen ’077 were substituted for the angulated guide

structure of Langen ’959, the resulting arrangement would

have all the claim elements.

These are not “remarkable” statements. “Virtually all

inventions are combinations and virtually all are

combinations of old elements.” Environmental Design, Ltd.,

713 F.2d at 698, 218 U.S.P.Q. at 870. Riverwood’s

stipulations merely recognize that fact. In addition, because

Langen ’959 and Langen ’077 were considered by the

Examiner, it is presumed that he already knew the substance

of the facts admitted by these stipulations. See Applied

Materials, Inc. v. Advanced Semiconductor Materials,

98 F.3d 1563, 1569, 40 U.S.P.Q.2d 1481, 1485 (Fed. Cir.

1996), cert. denied, 520 U.S. 1230 (1997).

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37a

Appendix A

The third and fourth “key pieces of information” relate

to prior art that was not before the Examiner when the ’806

application was allowed. Mead is not relying on these

additional references as forming the basis of an obvious

combination, only as allegedly providing a teaching to

combine Langen ’959 and Langen ’077. The record shows

no basis for holding that this information is more material

than the prior art of record during prosecution of the ’806

patent, and the Special Master did not find that they were.

Instead, the Special Master erroneously stated that the mere

“existence” of prior art not considered by the Examiner made

the challenger’s burden easier to meet. [A38, CL932]

See W.L. Gore, 721 F.2d at 1553, 220 U.S.P.Q. at 313

(requiring that the art presented at trial must be more pertinent

than that considered by the PTO in order to ease the

challenger’s burden).

The additional prior art relied upon by Mead, i.e., LeBras

139 and the Pillsbury machine, both show two-stream

cartoners where a barrel cam loader (or an equivalent

escalator) has been employed. These references still lack the

teaching that one of ordinary skill in the art at the time of

the invention would have employed a cartoner having three-

streams and a barrel cam loader. They are simply a teaching

that a barrel cam loader could be utilized in a two-stream

cartoner when an angled guide would not work properly to

obtain the desired package. They do not suggest that one of

ordinary skill the art would have chosen a three-stream cartoner

to begin with and then equip it with a barrel cam loader.

Mead’s other argument that “LeBras ’1 39, which cited

Calvert EPO ’333, effectively disclos[ed] a three-conveyor

38a

Appendix A

cartoner using a barrel cam loader” [Mead’s Brief, p. 20] is

apparently based on the Special Master’s conclusion that the

reference to Calvert EPO ’333 in the background portion of

LeBras °139 “would result in a three-stream system

cartoner.” [A38, CL930] This is wrong. Both Calvert EPO

333 and LeBras ’139 are two-stream cartoners. In addition,

there is no disclosure in LeBras °139 as to how a “third-

stream” could fit into the LeBras ’139 machine design.

The District Court properly recognized that the Examiner

already believed the use of a barrel cam loader in a two-

stream cartoner would have been obvious. [A5] It is hard to

see how additional prior art showing this same thing would

have made a difference.

In addition, Mead argues that the invention must be held

obvious based on certain testimony of Mr. Thomas,

Riverwood’s technical expert. While Mr. Thomas did state

that barrel cam loaders might be favored in certain instances,

Mr. Thomas testified unequivocally that the combination of

claims 1 and 13 would not have been obvious. [A311,

p. 1484]. Thus, Mead’s reliance on his testimony to support

a finding of obviousness does not rise to the level of clear

and convincing evidence.

Mead also contorts the holding of B.F. Goodrich Co. v.

Aircraft Braking Sys. Corp., 72 F.3d 1577, 37 U.S.P.Q.2d

1314 (Fed. Cir. 1996) in trying to find arguments for

invalidating the ’806 patent based on Mr. Thomas’

statements. In B.F. Goodrich, the “inventor himself agreed,

if [his inventive] thick/thin [disc brake] arrangement makes

sense for an overhaul, it would seem to be logical to adopt it

39a

Appendix A

ab initio”. B.F. Goodrich, 72 F.3d at 1583, 37 U.S.P.Q.2d at

1319. In light of that admission, the invention was held to

be obvious over a single reference showing the utilization

of the thick/thin arrangement in a brake overhaul application.

Unlike B.F. Goodrich, there is no evidence in this case that

a barrel cam loader was ever utilized in any three-stream

cartoner and there was certainly no admission of obviousness

by any of the inventors.

3. The Patent Office Found Claims 1 and 13 of the

"806 Patent to be Unobvious To One of Ordinary

Skill in the Art

As discussed in detail above, the file history of the ’806

patent shows that each of the individual elements set forth

in claims 1 and 13 was disclosed in references before the

Examiner. Among the references before the Examiner were

the two patents — Langen ’959 and Langen ’077 — that

form the basis of Mead’s appeal and which Mead says

“suggest the very substitution made by [the ’806 patent

applicants] in the ’806 patent.” [Mead’s Brief, p. 11] Having

reviewed all the prior art of record, the Examiner determined

that the claimed combination would not have been obvious

to one of ordinary skill in the art, even over Langen °959

and Langen ’077.

The Examiner’s decision to grant the ’806 patent

application is “evidence the court must consider in

determining whether the party asserting invalidity has met

its statutory burden by clear and convincing evidence.”

Custom Accessories, 807 F.2d at 961, 1 U.S.P.Q.2d at 1200

(quoting Jnterconnect Planning Corp. v. Feil, 774 F.2d 1 132,

40a

Appendix A

1139, 227 U.S.P.Q. 543, 548 (Fed. Cir. 1985)) (emphasis

added). This “presumption of administrative correctness of

actions of the agency charged with examination of

patentability” was ignored by the Special Master and is being

avoided now by Mead. See Applied Materials, Inc., 98 F.3d

at 1569, 40 U.S.P.Q.2d at 1485. The District Court

understood the implications of the Examiner’s decision to

issue the patent. As obviously also recognized by the District

Court, the challenger’s burden is especially difficult where

one seeks to invalidate a patent based on prior art that was

before the examiner during prosecution of the underlying

patent application. Hewlett-Packard Co. v. Bausch & Lomb,

Inc., 909 F.2d 1464, 1467, 15 U.S.P.Q.2d 1525, 1527 (Fed.

Cir. 1990).

Because all of the elements of claims 1 and 13 were

present in prior art references considered by the Examiner,

the prosecution history of the ’806 patent is powerful

evidence against Mead’s position that it would have been

obvious to substitute the barrel cam loader of Langen °077

for the stationary angled guide rails in the three-stream

Langen ’959 device when considering the prior art as a whole.

In reaching his erroneous conclusion that claims 1 and

13 were invalid for obviousness, the Special Master

speculated that the Examiner simply did not review Langen

’959 at the time the ’806 application was allowed. [A27,

FF951] In so doing, the Special Master overstepped the

bounds of controlling authority and improperly substituted

his own judgment for that of the Examiner. The lack of an

express indication that a reference was again reviewed at

the time of allowance does not mean that it was not so

4la

Appendix A

reviewed. In re Portola Packaging, Inc., 110 F.3d 786, 790,

42 U.S.P.Q.2d 1295, 1299 (Fed. Cir. 1997); see also

Windsurfing Int’l, Inc. v. AMF Incorporated, 782 F.2d 995,

998-99, 228 U.S.P.Q. 562, 564 (Fed. Cir. 1986) (as a

qualified government agency, the PTO is presumed to do its

job even without an express statement that a particular point

was considered). If the reference was before the Examiner,

it must be presumed that he or she reviewed the reference

before deciding to allow the claims. Portola Packaging, 110

F.3d at 790, 42 U.S.P.Q.2d at 1299.

The Special Master’s substitution of his own judgment

for that of the Examiner without deference to the clear and

convincing standard was legal error.'* The Special Master

ignored substantial evidence that cut against the conclusion

of invalidity that he ultimately reached.

4. Itis Improper to Use Development of an Invention

as Evidence of Obviousness_

Perhaps recognizing the weakness of its case, Mead

devotes considerable space in its Brief to a discussion of the

manner in which the ’806 invention came about. [Mead’s

Brief, pp. 15-18] Mead asserts that the several different

designs considered by the inventors are, somehow, evidence

that the claimed invention would have been obvious. In so

16. Even Mead does not go so far as the Special Master in

presuming that the Examiner did not review Langen ’959. Instead,

Mead argues that the Examiner did not have the benefit of certain

“key pieces of information.” [Mead’s Brief, p. 20] As discussed

herein, all of this “key” information is merely cumulative to what

the Examiner did consider.

42a

Appendix A

doing, Mead perpetuates the legal error committed by the

Special Master, who also used the way the ’806 patented

invention was made to negate validity. [A23 FF935; A38

CL431]

The last sentence of 35 U.S.C. § 103(a) states:

“Patentability shall not be negatived by the manner in which

the invention was made.” (emphasis added) This statutory

principle recognizes that “[m]ost technological advance is

the fruit of methodical, persistent investigation.” Jn re Dow

Chemical Co., 837 F.2d 469, 472, 5 U.S.P.Q.2d 1529, 1531

(Fed. Cir. 1988). As such, “[t]he invention must be viewed

not with the blueprint drawn by the inventor, but in the state

of the art existed at the time.” Jnterconnect Planning, 774

F.2d at 1138, 227 U.S.P.Q. at 547. It is strictly improper to

look to the knowledge gained as a result of the inventor’s

work, and then use that knowledge against its teacher.

Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 1092,

227 U.S.P.Q. 337, 343 (Fed. Cir. 1985), vacated on other

grounds, 475 U.S. 809 (1986).

While evidence regarding the way an invention came

about cannot be used to “negative” an invention, there is no

similar statutory restriction against using such evidence in

support of an invention. Here, at least three prior and

structurally different cartoners were seriously considered

before the claimed invention was conceived.

The initial design was a two-stream machine utilizing

fixed guide rails. [A99, pp. 218-19; Al1014; A1793,

pp. 34-35] Minnesota Automation, Riverwood’s predecessor-

in-interest, decided not to sell this machine due to concerns

43a

Appendix A

that it might infringe Mead’s Calvert °673 patent. [A106,

pp. 259-60; A1796, p. 50]

The second design that was developed was also a two-

stream structure, utilizing an infeed conveyor with flight bars

cammed in from both sides to separate the articles into groups

and using an angled guide rail to plow the articles into the

carton from both sides. [A98-A99, pp. 214-217; Al 733] This

design was abandoned due to its complexity and cost, not

because of any patent infringement concerns. [A99, p. 222]

The third design was also a two-stream structure utilizing

cammed-in flight bars and a barrel cam loader. [A99,

pp. 219-20; A1019] After Minnesota Automation became

aware of Langen ’077, it chose to steer clear of any potential

infringement issue and decided not to sell this particular

design. [A99, p. 220]

The machine set forth in claims 1 and 13 of the ’806

patent was thus the fourth design conceived by the inventors

and was the first and only machine that employed three

streams.'’ [A99, p. 219] Contrary to Mead’s improper

argument, the development of the ’806 invention is actually

evidence of its nonobviousness. In a real world scenario,

17. Mead says that this fourth design was the “only remaining

combination”. [Mead’s Brief, p. 18] No support exists for this

statement in the record at trial. For example, flight bars are not the

only means that can be used for selecting articles into groups —

Nigrelli °551 utilizes pins to perform this selection. [A534-A536,

col. 8, line 63 through col. 11, line 3] Moreover, in making this

Statement, Mead does not account for all of the various iterations

that could have been made to cartoning machines.

44a

Appendix A

Riverwood’s own designers did not initially adopt the

ultimate patented design, but made several attempts to

provide the market with a suitable machine.

Irrespective of what happened at Riverwood, the

evidence showed that Mead also considered and abandoned

several alternatives before arriving at its ultimate commercial

embodiment which infringed the ’806 patent. At Mead, there

were many “different things that were thought about, toyed

over, either looked further into or just passed over.” [A150,

p. 520] Numerous different designs were considered before

deciding on the design of the DuoStack machine. [A1935,

p. 41] Among the designs considered, but not adopted, by

Mead included (1) modifying Mead’s existing two-stream

DuoDozen machine;'*® [A150, p. 521; A1935-A1936,

pp. 41-42] (2) using a vacuum system to lift one layer of

cans and deposit them on top of another layer of in-line cans

instead of using the article selecting conveyor; [A151,

p. 522; A1936, pp. 43-44] (3) using a vacuum system to lift

and deposit one group of cans on another group beside the

first group instead of using the article selecting conveyor;

[A151, p. 523] (4) using a cluster-pack arrangement instead

of pushing individual cans into open carton sleeves (this is

basically what is shown, at least in part, on the Pillsbury

machine); [A151, pp. 523-524; A1936, p. 42] and (5) a

proposal by Mr. LeBras, a French engineer employed by

Mead, who was concerned that Mead not “follow what

RIVERWOOD is doing.” [A1635-A1637; A1704, p. 47

(emphasis added)]

18. The DuoDozen machine is the commercial embodiment of

the machine shown in Calvert ’673. [A157, pp. 562-563]

45a

Appendix A

Instead of using one of these alternative machines, Mead

chose to adopt a machine that infringed Riverwood’s ’806

patent. By completely disregarding this evidence, the Special

Master again committed legal error.

5. The Special Master Improperly Discounted

Riverwood’s Substantial Evidence of Secondary

Considerations

When present, evidence that the invention was

commercially successful, or solved a long-felt but unsolved

need, or was copied, or that others had attempted to create

the invention but failed, must be considered in determining

the obviousness of an invention. Custom Accessories, 807

F.2d at 960, 1 U.S.P.Q.2d at 1199. In addition, the

replacement cf prior art machines by the invention can also

be considered in determining the obviousness of an invention.

Kansas Jack v. Kuhn, 719 F.2d 1144, 1150, 219 U.S.P.Q.

857, 861 (Fed. Cir. 1983). These real-world factors “can be

the most probative evidence of nonobviousness in the

record.” Custom Accessories, 870 F.2d at 960, 1 U.S.P.Q.2d

at 1199.

In this case, the Special Master improperly considered

the issue of obviousness separate and apart from, and before,

the secondary considerations were considered. [A42,

CL] 48-50] Once the Special Master had decided that the

invention would have been obvious, he then looked to the

secondary considerations to determine if they would

“overcome” his conclusion. [A42, CL] 50] In doing so, the

Special Master showed a fundamental misunderstanding of

the law governing secondary considerations.

46a

Appendix A

[T]he determination of obviousness, vel non,

requires that all of the evidence be considered

together.... The objective evidence of

unobviousness is not evaluated for its “separate

knockdown ability” against the “stonewall” of the

prima facie case, Jn re Rinehart, 531 F.2d 1048,

189 USPQ 143 (CCPA 1976), but is considered

together with all other evidence, in determining

whether the invention as a whole would have been

obvious to a person of ordinary skill in the field

of the invention.

Applied Materials, 98 F.3d at 1570, 40 U.S.P.Q.2d at 1486

(emphasis added). Once again, the Special Master committed

legal error in evaluating the obviousness of the claimed

invention.'®

While the ultimate result of the Special Master’s error

was corrected by the District Court’s Judgment, Riverwood

believes that this error may have caused the District Court

to improperly discount the substantial evidence of secondary

considerations. If this Court decides that the District Court

misapplied the clear and convincing standard, then

Riverwood believes that at least the following factual

findings should have been made by the Special Master.

19. Mead’s Brief includes this same faulty analysis in that it

addresses the issue of secondary considerations after arguing that

the invention would have been obvious, rather than considering such

evidence as part of the obviousness inquiry. [Mead’s Brief, p. 43]

47a

Appendix A

a. Riverwood Proved a Sufficient Nexus Between

the Merits of the Invention and the Invention ’s

Enormous Commercial Success

For commercial success to be relevant to the obviousness

determination, a patentee must establish @ nexus between

the claimed invention and the commercial success. Gambro

Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1579,

42 U.S.P.Q.2d 1378, 1384 (Fed. Cir. 1997). A “nexus” is a

“legally and factually sufficient connection between the

proven success and the patented invention.” Demaco Corp.

v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392,

7U.S.P.Q.2d 1222, 1226 (Fed. Cir.), cert. denied, 488 U.S.

956 (1988). The patent owner establishes a prima facie case

of nexus by Showing that the patented machine is

commercially successful, and that it is covered by the patent

claims in suit. Jd.

Riverwood established a prima facie nexus in this case.

The Twin-Stack machine has been commercially successful,

and the Twin-Stack machine is admittedly covered by claims

1 and 13 of the ’806 patent. [A27, FF952] In addition, the

Special Master acknowledged that at least part of the

commercial success of Riverwood’s Twin-Stack project was

due to the machine itself.”° [A27, FF952] Because the Special

Master believed that other factors such as the package design

also contributed to the commercial success, he concluded

that there was not a “sufficient” nexus between the claimed

20. Mead erroneously implies that the District Court found that

all of the commercial success was due only to the package design

and the use of a dividing pad. [Mead’s Brief, p. 45]

—

48a

Appendix A

subject matter and the commercial success. [A27 FF9452;

A42 CL9450]

“It is not necessary, however, that the patented invention

be solely responsible for the commercial success, in order

for this factor to be given weight appropriate to the evidence,

along with other pertinent factors.” Continental Can Co. USA

Inc. v. Monsanto Co., 948 F.2d 1264, 1273, 20 U.S.P.Q.2d

1746, 1752-53 (Fed. Cir. 1991) (emphasis added). The

Demaco case does not support Mead’s argument to the

contrary. Demaco does not say that commercial success

“cannot be employed as evidence of non-obviousness” when

the commercial success is a “by-product of various factors”.

[Mead’s Brief, p. 44] Instead, “[o]nce a prima facie case of

nexus is made the court must consider the evidence adduced

on both sides of the question, with such weight as is

warranted.” Demaco Corp., 851 F.2d at 1393, 7 U.S.P.Q.2d

at 1227. “When a prima facie case is made and not fully

rebutted, the district court may not totally ignore the objective

evidence.” Jd. (emphasis added) That is what the Special

Master did and it is what Mead desires this Court to do now.

Here, the testimony at trial clearly established that a

substantial part of the commercial success of the Twin-Stack

machine was due to the merits of the invention. As noted

above, extensive evidence was presented regarding the

benefits that are achieved with the combination of a

“three-stream machine” and a barrel cam loader.

In addition, several of the factors believed by the Special

Master to undercut Riverwood’s prima facie showing of

nexus are either clearly erroneous or should not have been

49a

Appendix A

considered as a matter of law. For example, the Special

Master found:

Much of the commercial success of the Riverwood

Twin Stack cartoner can be attributed to a

development agreement entered into with Pepsi-

Cola, who funded the development in return for

which Riverwood granted rebates on cartons to

Pepsi-Cola and an exclusive option on a first

number of cartoners for use in the soft drink

industry. [A28, FF954]

This finding, however, is at odds with the only evidence

presented at trial regarding the so-called “Pepsi agreement.”

According to the agreement, Pepsi paid Riverwood an

advance of $75,000 to accelerate development of the

Twin-Stack machine. [A1070-A1073; A279, p. 1290] In

return, Pepsi received an option on a certain number of the

first Twin-Stack machines for the soft drink industry only.

[A1070-A1073; A279, p. 1290] If Pepsi decided to lease the

machines, it would receive a credit against the lease fee then

due. [A1070-A 1073] Another separate agreement guaranteed

Riverwood 100% of sales of cartons to be run on the

machines for a six-year period of time. [A279, p. 1290-1291]

This separate agreement contemplated that rebates could be

given to Pepsi in some circumstances, based on a variety of

factors. [A279, p. 1291]

These agreements clearly indicate that the Twin-Stack

machine, itself, was commercially successful, not that the

success was due to any agreement with Pepsi. In fact, this

50a

Appendix A

evidence demonstrates Pepsi’s belief that the machine was

to become an important part of its business. That belief later

became a reality.

That a customer of Riverwood desired the invention, and

was willing to pay for receiving certain options to speed up

its opportunity to use that invention, substantiates the fact

that the invention has merit. If the Twin-Stack machine had

not performed satisfactorily, it is likely that Riverwood would

have lost the Pepsi business. See Litton Systems, Inc. v.

Honeywell Inc., 87 F.3d 1559, 1570, 39 U.S.P.Q.2d 1321,

1327 (Fed. Cir. 1996) (finding that although a lucrative

contract was acquired at a time when the prior art was being

used, there is a “reasonable inference” that the contract would

have been lost without the invention), vacated on other

grounds, 520 U.S. 1111 (1997). Instead of losing the Pepsi

business, Riverwood’s market share at Pepsi actually

increased from about 10% to greater than 80-82% because

of Riverwood’s success with the Twin-Stack machine.

[A278, p. 1282]

In addition, the Pepsi-Cola agreement has absolutely no

bearing on the success of the Twin-Stack machine in the

beer industry. Riverwood nearly doubled its annual gross

revenue from the beer industry during the four-year period

after introducing its Twin-Stack machine. [A277, p. 1279]

Thus, even if it could be argued that the Pepsi agreement

discounted the commercial success of the patented Twin-

Stack machine in the soft drink industry, that agreement

would have had no similar effect in the beer industry where

Riverwood also enjoyed abundant commercial success.

Sla

Appendix A

The Special Master erroneously focused only on

Riverwood’s Twin-Stack machine, and ignored the

contribution of Mead’s infringing DuoStack machine to the

secondary considerations in this case. The law, however,

requires that activities of their infringer also be considered.

Litton Systems, 87 F.3d at 1569, 39 U.S.P.Q.2d at 1327

(noting that both plaintiff and defendant enjoyed commercial

success with the patented invention); see also Truswall

Systems Corp. v. Hydro-Air Eng’g Inc., 813 F.2d 1207, 1215,

2 U.S.P.Q.2d 1034, 1041 (Fed. Cir. 1987) (Rich, J.,

dissenting) (“[O]nce an infringer is sued and proved to be

an infringer, its sales are appropriately proved and added to

the others.” (emphasis in original)). Here, Mead’s infringing

DuoStack machine also was commercially successful and

replaced a number of prior art machines. [A1655-A1667]

The Special Master also concluded, erroneously, that

“the Twin Stack cartoner incorporated features that were not

within the scope of the ’806 patent but rather were within

the scope of four other Riverwood patents.” [A27-A28,

FF952] In actuality, evidence was presented at trial that

features shown in several other patents were included in the

Twin-Stack machine. [A280, pp. 1294-1298; A1505-A1507;

A706-A712; A1509-A1512; A713-A723; Al542-A1543;

A731-A751; A1545-A1546; A1549-A1551; A752-A760;

A1560-A1561; A761-A786; A1576-A1577; A813-A828;

A1584-A1585; A787-A812] The ’806 patent is directed to

the overall machine concept, not to a particular component

of the machine. In contrast, each of the features relates to

either a component or an embodiment of a machine built in

accordance with the ’806 invention. There is no evidence

that any of these features, in and of themselves, are solely or

52a

Appendix A

primarily responsible for the commercial success of the |

machine. Instead, the testimony is that the overall machine,

including its features, is the reason for the commercial

success. Furthermore, there was absolutely no evidence that

the inventions of these other patents were not “within the

scope of the ’806 patent.” Where a successful machine

embodies the claims of multiple patents, “all are entitled to

the benefit of the overwhelming success to which each has

contributed.” Panduit, 774 F.2d at 1100, 227 U.S.P.Q. at 349.

b. Riverwood Produced Significant Evidence of

Copying by Mead

Regarding the secondary consideration of copying by

the infringer, the Special Master found:

Mead has developed and marketed a cartoner

incorporating the subject matter of claims 1 and

13 of the ’806 patent, which it markets under the

name DuoStack. There is evidence that Mead was

aware of development of Riverwood’s Twin Stack

cartoner, which would tend to support evidence

of copying. However, there is no evidence that

the Mead DuoStack was a copy of the Twin Stack

cartoner. [A28, FF953]

Thus, even though Mead used Riverwood’s invention, and

even though evidence was present that “would tend to support

evidence of copying,” the Special Master believed that there

was no evidence that Mead had copied Riverwood’s patented

machine. Apparently, the Special Master believed that

evidence supporting an inference of copying could not be

53a

Appendix A

considered unless there was also direct evidence of copying.

This was legal error. There was evidence of copying.

Circumstantial evidence of copying is, in and of itself,

competent evidence that copying occurred. Century Wrecker

Corp. v. E.R. Buske Manufacturing Co., 913 F. Supp. 1256,

1273 (N.D. lowa 1996). The Plaintiff must show only that

the general concept embodied in the claims was copied, not

that the infringer slavishly copied minor and unclaimed

details. See Stryker Corp. v. Intermedics Orthopedics, Inc.,

96 F.3d 1409, 1414, 40 U.S.P.Q.2d 1065, 1068 (Fed. Cir.

1996) (in context of willful infringement finding, “slavish

copying” to prove copying is not required); see also

Vandenburg v. Dairy Equipment Co., 740 F.2d 1560, 1567,

224 U.S.P.Q. 195, 199 (Fed. Cir. 1984) (court rejected

evidence of copying where the facts showed basic concept

of the invention had been developed independently by the

infringer).

The evidence presented at trial provides substantial and

compelling evidence that Mead’s DuoStack machine is a

copy of Riverwood’s patented Twin-Stack machine. Many

of Mead’s employees had a copy of a drawing of a Riverwood

Twin-Stack machine prior to Mead finalizing the design for

the DuoStack machine. [A1598; A156-A157, pp. 555-559;

A1930, p. 18; A1702, p. 37; A1703, p. 41; A1726, pp. 54-55;

A1868-A1869, pp. 38-40; A1914, p. 73] In addition, an

internal memorandum authored by one of Mead’s engineers

warned Mead to “‘not follow what RIVERWOOD is doing”.

[A1635-A1637; A1704-A1705, pp. 47-52 (emphasis in

original)] In the memorandum, Mr. LeBras proposed a two-

stream design having angulated guide rails, which Mead did

54a

Appendix A

not use. [A1635-A1637] Instead, Mead proceeded with a

machine that was structurally very similar to the Riverwood

~ Twin-Stack machine and which was an infringement of the

°806 patent.

Furthermore, the activities of an individual named Joe

Borocz point to copying by Mead. Mr. Borocz was an

employee of Riverwood when the Twin-Stack machine was

being developed. In fact, Mr. Borocz, in his position as

director of marketing for Riverwood, had complete and total

responsibility for the development of the Twin-Stack project,

including responsibilities for interfacing with the packaging

design group, the machinery engineering group, the sales

groups, the marketing group, the legal group, and customers.

[A276-A277, pp. 1272-1273, 1275-1276]. During his

employment at Riverwood, Mr. Borocz was totally involved

in all aspects of developing the Twin-Stack package and

machine. [A276, p. 1273; Al675-A1676]

In September 1992, Mr. Borocz left Riverwood and

immediately began working for Mead. [A1815, p. 16] At

Mead, he quickly became responsible for the introduction

and commercialization of Mead’s competing DuoStack

project. [A1921, p. 101] Shortly after joining Mead, Mr.

Borocz, in fact, attended a meeting in Mead’s office in France

during which he described the structure and scope of the

Riverwood Twin-Stack machine to Mead’s engineers in

attendance. [A1634] In addition, during this meeting, Mr.

Borocz informed Mead employees that a patent application

had been filed on the mechanical concepts embodied in the

Twin-Stack machine. [A1634; A1700, pp. 30-31; A1703-

A1705, pp. 42-46, 48-50] Thus, Mr. Borocz clearly informed

55a

Appendix A

Mead’s designers about Riverwood’s design at a time when

Riverwood’s design was confidential.

Moreover, prior to Mr. Borocz leaving Riverwood, the

intended design for the Twin-Stack machine included an

overhead structure located at the top of the machine and

positioned over the location where the cans would be after

they had been stacked in layers. [A293, pp. 1374-1375;

A1598]} This overhead structure was known as a “nesting

compression belt”. [A293, pp. 1374-1375: A 1598] After Mr.

Borocz left Riverwood, Riverwood decided not to use this

overhead structure in designing its Twin-Stack machine.

[A293, pp. 1375-77] The “overhead compression belt” is on

the floor plan of the Riverwood machine that Mead had in

its possession and Mead included a similar structure on its

DuoStack machine. [A1598; Al621; A157, pp. 560-562;

A1856, pp. 180-81] Mr. Borocz testified that the overhead

Structure on the Mead machine was a “compression”

mechanism, but that it was unnecessary to the operation of

the DuoStack machine. [A1856, pp. 180-182] In-fact, Mr.

Borocz requested Mr. Culpepper to remove the overhead

structure to streamline the appearance of the DuoStack

machine. [A1856, pp. 180-181] This evidence clearly

supports the inference that Mead copied Riverwood’s

patented machine. The Special Master’s finding to the

contrary is clearly erroneous.

56a

| Appendix A

c. Both the Twin-Stack and the DuoStack Machines

Replaced Prior Art Mead Machines at Customer

Locations

The evidence presented at trial showed that many of

Riverwood’s 100 Twin-Stack machines and Mead’s

33 infringing DuoStack machines replaced prior art Mead

machines that had been in customers’ facilities. [A1661-

A1666; A1856-A1857, pp. 182-184] The replacement of

prior art machines by machines embodying the invention is

evidence that the invention would not have been obvious.

Kansas Jack, 719 F.2d at 1150-51, 219 U.S.P.Q. at 861. This

factor, like commercial success and copying, should have

been considered by the Special Master as part of the

obviousness inquiry, instead of considering whether such

factors would “overcome” the obviousness of the invention.

CONCLUSION

After reviewing the record from trial, it should be clear

that the District Court’s judgment that the ’806 patent had

not been proven invalid should be affirmed. The claimed

invention is, as found by the Patent Examiner, an unobvious

combination that combines a three-stream cartoner with a

barrel cam loader. Mead has not demonstrated on this Appeal

that one of ordinary skill in the art would have chosen a

three-stream cartoner from the prior art at the time of the

806 invention and then equip that prior art cartoner to replace

the angled guides with a barrel cam loader. Accordingly,

the District Court’s judgment should be affirmed.

57a

Appendix A

Respectfully submitted,

s/ Wellington M. Manning, Jr.

WELLINGTON M. MANNING, JR.

NEIL C. JONES

CRAIG N. KILLEN

DORITY & MANNING

700 EAST NORTH STREET,

SUITE 15

GREENVILLE, SC 29601

(864) 271-1592

Attorneys for Plaintiff-Appellee,

Riverwood International

Corporation

58a

APPENDIX B — TRANSCRIPT OF ORAL ARGUMENT

OF THE UNITED STATES COURT OF APPEALS FOR

THE FEDERAL CIRCUIT DATED FEBRUARY 9, 2000

UNITED STATES COURT OF APPEALS

FOR THE FEBERAL CIRCUIT

99-1274

RIVERWOOD INTERNATIONAL CORPORATION,

Plaintiff-Appellee,

— against —

THE MEAD CORPORATION,

Defendant-Appellant.

February 9, 2000

Audiotape Transcription of

ORAL ARGUMENT

BEFORE:

CHIEF JUDGE MAYER

CIRCUIT JUDGE SCHALL

CIRCUIT JUDGE GAJARSA

* %* *

59a

Appendix B

[3] THE COURT: The next case is No. 99-1274,

Riverwood International Corporation v. The Mead

Corporation.

Mr. Coll?

MR. COLL: Good morning, your Honor.

If it please the court, we bring this appeal from a

judgment — a portion of a judgment entered by the Northern

District of Georgia. That portion of the judgment that found

that patent Ziegler 806 was valid and was not valid under

103 obviousness standards. Now, this case was not tried

though before Judge Moye in the Northern District. This

case —

THE COURT: I apologize. One procedural question. It’s

up here on the basis that the judge granted summary

judgment, correct?

That is what he granted, correct? It says he granted

summary judgment.

MR. COLL: No.

What happened here, your Honor, [4] was that the case

was tried — it was a plenary trial —

THE COURT: I understand. It was before the special

master.

MR. COLL: Before the special master. And then a

recommendation was made by the special master which

)

60a

Appendix B

would constitute as it should, special findings of fact and

conclusions of law. Upon receipt of those findings of fact,

and conclusions of law, the parties made their various

objections with regard to those findings.

Judge Moye accepted all of the findings of fact without

qualification, without exception. He indeed praised the ability

and the breadth and thoroughness of those findings of fact.

However, he rejected one conclusion of law. He accepted

the conclusions of law that related to infringement, that

related to anticipation, that related to (inaudible.)

[5] THE COURT: I understand that. But it says in AO ~

he entered partial summary judgment.

I agree that — I was just trying to see, you are absolutely

right. It seemed TO me that, I was wondering why does he

say entering partial summary judgment. Obviously you

would have thought he would have said I accept the findings

of fact but come to a different legal conclusion.

MR. COLL: I’msorry. Your Honor, your reference was?

THE COURT: _A9. The addendum. It says — well

maybe that is just a mistake.

MR. COLL: I think that the-order is fashioned or the

judgment is fashioned because of the fact that the case still

has a portion to be tried. It was bifurcated. And the damage

portion has yet to be tried. Therefore it was what was tried

what the liability issues and then those [6] liability issues

6la

Appendix B

were entered as final judgment in order to allow that appeal

to occur here.

THE COURT: I agree the way you laid out the case.

I just couldn’t understand why it said summary judgment.

But you've cleared it up. \

MR. COLL: That happens to be the circumstances.

In any event, at the time of the recommendation was

made, the patent holder, the patentee, had to object to a dozen

and a half findings of fact in order to make it’s argument

that the patent — the invention was (inaudible) none of those

18 objected to findings of fact were in any way modified or

rejected by Judge Moye.

Instead, what Judge Moye did was in — he appeared to

be stymied, for lack of a better word, by the presumption of

validity and the presumption of administrative regularities. \

[7] This patent had obviously been granted, some of the

prior art was before the special master had been before the

examiner. And upon that he found, despite the fact that he

had already accepted all of the evidentiary findings, all of

the findings of fact, as being established on clear and

convincing evidence, he found that the conclusion as to

obviousness wasn’t clear and convincing. That’s not the

standard.

It is our position on appeal — it was our position before

him, that that factual record that he had established could

‘ead but to one conclusion on obviousness, and that is that it

wasn’t obvious, and it was invalid under 103.

62a

Appendix B

-Now, what this patent relates to is a cartoning machine,

a large automatic machine that loads bottles, cans or other

articles into cardboard containers. And the issue here boils

[8] down to a fairly simple statement. There were there are

two-stream cartoners and there are three-stream cartoners.

There is a history and there is testimony that fixed angle

guides, which is the old loading device, and barrel cam loaders

have been interchangeable for sure in two-stream devices.

The question was did the art, did the prior art, teach the

desirability of combining the barrel cam loader in a three-

stream device. And there is a particular finding in there that

is interesting. Because the way these machines work is, and

the way it is defined in this patent the claim is described in

this patent; stream No. | is the conveyor that brings the

articles, the bottles and cans, into the machine; stream No. 2

is that conveyor that selects, that is puts the cans into the

requisite number that [9] will go into the carton; stream No. 3

is the carton. And it is when the articles have been selected

into the requisite number and the carton is now parallel with

it that the force — either the angle guide or the barrel cam

loader pushes or directs the cans into the carton.

The finding that it’s apt, and it is the one that says it is

apt, that because at the time that the loading, in fact, occurs

there are only two streams in operation: The stream with the

selected articles, the stream with the cartons, and then the

barrel cam loader or the angle guide directs or pushes.

We have, at trial, established to the satisfaction of the

master, and apparently upon the confirmation of that portion

63a

Appendix B

of the report, to the satisfaction of the judge, that three-stream

and two-stream were common, well known, and used in the

[10] industry in the art.

The barrel cam loader and angle guides were

interchangeable. Indeed a piece of art, prior art, that was

before the court, and before the master, was the item called

the Pillsbury machine which not only showed that one could

sit down when one made a machine and decide well do

I want to put a barrel cam loader on it, or put an angle guide

on it. What that piece of prior art said is that I can put them

both on the machine and then depending on the day I’ll use

whichever one I wish.

THE COURT: Doesn’t Langen-959, in fact, mentions

cam loaders, doesn’t it? It Says that there are cost

disadvantages, doesn’t it, but it does mention them in a

setting.

MR. COLL: It mentions it not only in the setting of an

automated cartoner, it mentions them as — if one reads the

language in its plain [11] meaning, that they can be used —

what it says is there is an expense attendant to the manufacture

of it, and there is an expense attendant to the maintenance of it.

I mean, that doesn’t teach away. In fact, that teaches the

desirability. Because what it Says is, and what much of the

other prior art says, there are advantages to the barrel cam

loader that are not available in the angle guide relating to

the pressure, the ability to push the cans in an affirmative

fashion into the box, rather than having an angle guide that

just directs it into the box.

64a

Appendix B

THE COURT: You get a snugger fit.

MR. COLL: Snugger fit. Better fit and depending on

the size or the shape of the container maybe an easier fit

because of the way it pushes them rather than let them stack

up against each other.

[12] So, we have before the examiner were two pieces

of art that are at play here. That is Langen-959 and Langen-

077. We had now at trial, LeBras, the Calvert European

patent, the Pillsbury machine, and very importantly the

admission of Mr. Zeigler, the co-inventor, who says that yes,

three-stream art, two-stream art is well known. There is a

suggestion — my mouth’s getting a little dry — excuse me.

There is a suggestion in the briefs that three-stream art has

somehow become obsolete, gone out of favor, disappeared.

Whether or not that is the case it’s legally irrelevant, but it

wasn’t the case and Mr. Zeigler spoke about it in his

testimony. We have Mr. Thomas who is a technical expert

who testified on behalf of the appellee that it did teach — it

was suggested that the, desirability was suggested, of

combining these two [13] features if there was a reason. The

reasons were avoiding infringement, nature of the containers,

and positive push, all of which were reasons that came into

play here.

So we have those admissions — and that Pillsbury

machine, the LeBras patent, the EPO333 and these

admissions obviously weren’t before the examiner, and,

therefore the Judge’s sort of feeling chained to those

presumptions was not appropriate.

65a

Appendix B

THE COURT: Why don’t you just take a pause, and

take a sip.

MR. COLL: I will if you don’t mind. I’m sorry.

THE COURT: We won’t count that time against you.

MR. COLL: Excuse me. I’m into my rebuttal time I just

want to — the other thing on this appeal, the Appellees do a

lot of flanking and sort of lateral attacks on the basic factual

findings except for the secondary [14] considerations. And

those they have to take head on. Because they recognize that

on that record a presumption of, I’m SOITy, a prima facie

case of obviousness was made. And under the law they had

to come up to rebut that with the secondary considerations.

And they failed on every one of the secondary considerations,

and as a result of that they have to take those on in their

brief and they have. That is — and they have not shown

what is necessary to overturn any of them. And that is an

evidentiary record that says to you that you should have a

clear and firm conviction that a mistake was made on those

secondary considerations.

Til sit down now and use my time later. Thank you.

THE COURT: Mr. Manning?

MR. MANNING: Thank you, your Honor.

May it please the court. What we really have here is a

situation where [15] Judge Moye after listening to the

objections that were filed as to the master’s report looked at

66a

Appendix B

the matter and he says that the findings of fact on the critical

issue were not adequate. The critical issue is, as counsel

stated, the question of the three-stream device.

Now, in this three-stream device, putting this into the

real world scenario, these machines are big machines. These

machines are fast machines. And they must be accurate

machines. By way of example, in a soft drink plant or in a

beer plant, they will package bottles or they will package

cans and looking at the normal industry speeds, what we are

talking about, your Honors, is a machine that during the time

that I’m allotted here today, it will pack 36,000 cans. That is

a huge number of cans. And if one falls, or one topples, it

stops. So, these machines have to be accurate.

[16] And particularly in their briefs Mead would have

you believe — the special master, in fact, stated that the

inventors of the 806 patent simply went from the angle guide,

which they dropped because of a patent infringement

scenario, to the barrel cam loaders, but that’s not true. And,

in fact, both parties include in their briefs what did happen.

It was the fourth scenario when the 806 inventors came

up with what is now the patent that is before this court.

The first time they came up with a two-stream device

where the cans fit in into both sides which is typical for a

two-stream device, where they were loaded into the cartons

with the angle guides. Mead threatened with patent

infringement. They said okay we won’t do that.

The second trial was similar except that also a two-

stream device, [17] they used flight bars that cammed in from

67a i

Appendix B

the sides to separate this pay load that goes into the carton,

and still loaded into the carton with an angle guide. They

felt that the complexities of that machine were too great for

the marketplace, and so they abandoned that trial.

The third trial, they still were with a two-stream device

came straight into the machine with the cans, cammed in the

flight bars to separate the cans into the payloads, and then

pushed with what we call the barrel cam loader.

They then found the Langen-077 patent, and counsel

advised them not to make that, so they dropped the third

iteration.

So it was four iterations. So in a real world scenario not

the first, not the second not the third but it was the fourth try

when these inventors came up with this invention. That

speaks to nonobviousness.

[18] Secondly, Mead did the same thing. They went

through five to seven iterations, before they came up with

what has been adjudged as the infringing structure.

Now they had advantages for doing that. They had for

example as is set forth in the brief they had one of our

employees. They knew what we were doing. They had an

employee from Riverwood that, in fact went to France, the

evidence shows and told them what we were doing, Mr.

Borocz. They had the situation where they started with a

two-stream device as well, and after these five or so iterations

came up with the infringing structure.

68a

Appendix B

THE COURT: Mr. Manning, what you are reciting, for

the record, is this relating to secondary considerations in

some way?

MR. MANNING: I think it does show that, your Honor.

I think it does two things.

[19] THE COURT: Because, let me just ask one

question. As I read the briefs, and correct me if I am wrong,

the sense I had was that in terms of the findings of fact with

the special master that were then adopted by the District

Court, the only area in which you challenge the findings is

on the secondary considerations; is that correct?

I mean, it didn’t seem to me that there was a real

challenge to any of the fact findings of being clearly

erroneous, except in the area of secondary considerations.

Like you don’t challenge what the prior art teaches, but you

do challenge secondary considerations — now the findings,

am I right or wrong on that?

MR. MANNING: You are right on a big part your

Honor, but —

THE COURT: Pardon?

MR. MANNING: — not totally.

THE COURT: Where is the [20] challenge outside of

the area of secondary considerations? |

MR. MANNING: Well, for example, we believe that

clearly from the face of the 959 patent that is teaching away,

69a

Appendix B

the fact that it mentions an escalator is a complex mechanism.

That is not a mention of an escalator in a three-stream device.

That is nothing more than Saying these are things that have

been used in the past.

THE COURT: You are saying Langen-959.

MR. MANNING: Langen-959. That is one area, your

Honor. vd

Second area that we think that — in each of these prior

art references that were mentioned, LeBras, Pillsbury and

the European 333, we think there are flaws in each of those

findings.

We do not believe that they are general teachings of

substitutions of a barrel cam loader for an angle guide, but

instead are specific for a [21] particular reason and, in fact,

are all two-streamed as well.

THE COURT: But doesn’t the 959 patent disclose the

barrel cam?

MR. MANNING: It discloses in the background as

having been used in the past.

THE COURT: But it is disclosed as prior art, isn’t it?

MR. MANNING: It is disclosed as prior art, that is

correct.

THE COURT: Now, let me ask you a hypothetical

question.

70a

Appendix B

If | have a patent which I disclose using red wire and

blue wire. I say the blue wire is too expensive, but I disclose

it in my patent and five years later after the patent issues,

the blue wire becomes cheaper than the red wire, and then

somebody else files a patent application for the blue wire,

should that patent issue?

MR. MANNING: No, sir.

THE COURT: Because it’s [22] disclosed in the prior

art.

MR. MANNING: Yes, sir.

THE COURT: Isn’t that the case here?

MR. MANNING: No, sir. Not in my opinion.

If you look to what the Langen-959 patent says, it is

talking about what has been used in the past.

It does not say that a barrel cam loader has been used in

the past in a three-stream device. And, in fact it refers in the

body of the specification to an earlier Langen patent, 068

patent. And in that 068 patent, there is such an escalator

shown that’s in a two-stream device.

So, what Mr. Langen is talking about in that patent is

sure these things have been used before in a two-stream

device. They were in use. But never in this particular

combination. Never with a three-stream device.

7la

Appendix B

[23] THE COURT: What about the combination of the

two Langen patents, the 077 and the 959?

MR. MANNING: Well, what you are doing there is

going through it quickly. And Langen-959 is a three-stream

device, Langen-077 is a two-stream device. And we think

that the real world again, speaks to that. They are both Mr.

Langen’s. And if you look at what happened after this

machine, the 806 machine, went to the marketplace, it would

seem Mr. Langen, had it been obvious, would not have gone

back to the two-stream device. He left the three-stream

concept that he had in the 959 and when he went to the 077

he went to a two-stream device where he has the cammed-in

flight bars, he has the cans coming straight in, or the bottles,

and the barrel cam loader. So we think that it’s instructive

that he himself went away from the 959. So we don’t see

that as any suggestion or [24] teaching to make the

combination. And obviously our position is, your Honor, that

neither did the examiner. Because he had both the 959 and

the 077 before him, in fact, they are both mentioned in the

specification of the 806 patent. And they were both set forth

in an IDS to the patent office. And copies of each patent

were given to the examiner. So, we do not believe to that

combination — we don’: think it renders it obvious. There

is no question. And we admit that if you add a barrel cam

loader, then you’ve got the four elements. But we don’t

believe there is a teaching to do that. And there is a big

distinction in the market as far as we are concerned between

the three-stream and two-stream. We think the marketplace

has borne that out.

72a

Appendix B

We, in fact agree with Judge Moye that the evidence

presented at trial fails to show the obviousness based on [25]

this critical issue of the three-stream device.

And Mr. Coll said that three-stream cartons are well

known. Not true. The only evidence before this court of the

three-stream cartoner is Langen-959. Every other patent and

the Pillsbury machine are two-stream devices. The art had

gone totally away from that. And so, if you really look to

the art as a whole as to what it would teach one of the ordinary

skill it would teach them that a two-stream is the way to go

in the first place. Now —

THE COURT: All of the findings of the master, of

significance, were sustained by the District Court, right?

MR. MANNING: Yes, sir.

THE COURT: Well, do you agree that it’s our duty now

to take a look at those findings and come to a conclusion

ourselves as a matter of law whether obviousness has

been —

[26] MR. MANNING: Well my understanding is

that — I’m sorry, our Honor.

My understanding is that you do the review de novo,

and that in looking at whether or not Judge Moye was right,

I think yes you have to look at those. And we have set forth

in our brief where we feel that there is clear error in the

particular factual findings. The most egregious perhaps is in

the commercial success and in the copying. And of course

73a

Appendix B

using the iterations that I mentioned that Mead went through,

we consider those as failures of others. Everything you look

at in this case shows that it was not obvious. And when these

products hit the marketplace, by 1994, according to the list

of placements in the record there were 64 of these machines,

and they lease at our cost for $430,000 and you can see that

is quite an amount. The evidence at trial was 133 machines,

[27] that’s $59 million dollars worth of machines.

THE COURT: Is there any evidence in the record below

that you can point to that shows, in fact, that the commercial

success was attributable to the invention?

MR. MANNING: I think so, your Honor, by way of

testimony. Gordie Wilkinson testified at trial based upon the

Twin Stack machine which is Riverwood’s machine, that

these successes occurred. And he mentioned 100 Riverwood

machines, 33 Mead machines. And, of course, the Mead

machines were not considered at all by the special master.

And he said they were a result of the Twin Stack machine,

and of course the special master said that the Twin Stack

machine was commercially successful. He also said it

embodied the 806 invention. Which according to our

understanding is nexus, the prima facie case of nexus.

[28] The fact that there were other things on the machine,

he mentioned four other Riverwood patents. We do not believe

that if you have the technology where you can have four patents

to cover a machine that you should penalize one of them because

of commercial success. And we submitted evidence, testimony

evidence, your Honor, of the market share that prior to the

introduction of the Twin Stack machine Riverwood’s market

74a

Appendix B

share in the soft drink industry was 30 percent, at the time of

trial it was 50 percent. He mentioned —

THE COURT: Is there any tie-in between the increase

in the market share and the actual invention itself?

MR. MANNING: The tie-in?

THE COURT: What is the nexus?

MR. MANNING: The nexus is, your Honor, several

things.

No. 1, as stated by the special master, the invention is

embodied in [29] the machine.

Secondly, Mr. Wilkinson testified that in the last four

years, and this was at trial, that while Riverwood had sold

— not sold, leased 100 of these machines they had only

leased 12 of other machines, single stack machines. And of

course, it’s embodied in the invention. I don’t know that we

can show you any direct evidence that a customer said I am

leasing this machine because it has the three-stream device.

I can’t say that. But certainly when you look at the fact that

the invention is embodied there as found by the special

master, and that it had the flexibility that the invention

has — this is the thing that caused the machine to be popular.

No other machine in the world with a patent, for example

the Double Stack.

THE COURT: But the special master did not find any

nexus with regard to the secondary considerations [30] of

the increased market share.

75a

Appendix B

MR. MANNING: Well, the — sorry, your Honor. He

said insufficient nexus. Insufficient nexus means to me nexus

has been found, but not enough, in his opinion.

THE COURT: But not enough.

MR. MANNING: And we think that he is wrong there.

For example — my time is up.

THE COURT: You can answer the question.

MR. MANNING: He mentioned the Pepsi-Cola product.

That Pepsi-Cola had a single agreement, that Pepsi-Cola paid

$75,000 to fund the development. This is not true. Pepsi-

Cola paid 75,000 to accelerate the development, so they could

get the machines. There were two agreements. The other as

to the rebates, that is was in a totally separate agreement.

We think the fact that Pepsi-Cola ended up through the end

of °94 with $15.9 million worth of [31] these machines,

speaks to the success of the machine.

We believe, your Honor, that Judge Moye was correct

and that the judgment should be affirmed.

MR. COLL: — drink a little water before I get up here.

Just to touch on a couple of the points that my opponent

raised. One, he does attack the facts here under the guise of

law. For example, teaching away finding, that is a factual

finding that the law tells us — Panduit in re (inaudible) —

they tell us those are factual findings. They are not legal

findings. Yet he argues that it’s a legal finding and, therefore

76a

Appendix B

it’s de novo, it’s reviewed de novo, when it isn’t reviewed

de novo. It is reviewed on clear error standard.

The secondary features — I’m sorry, the secondary

considerations. The machines, the success of the machines,

were testified to principally [32] by a fellow named

Wilkinson.

Wilkinson said when asked on cross-examination, how

do you attribute the sales and the purported success relative

to the various attractive features of the machine which are

covered by patents and not by patents. He said he couldn’t.

He did not know.

The figures they gave with regard to market share.

Whether it was in the soft drink industry or beer industry

were all not tied to the machine. All they used the machine

for, was sort of a start date. We have a machine. We sold a

lot of machines. We sold a lot of paper. We sold a lot of

cartons. But we have a start date, that’s the machine date

when it’s on the market, and thereafter we just tell you what

our market share is. Our market share has improved, but it

can improve for any number of features. And it was for those

reasons that the special master said there is insufficient nexus

to [33] show success. He found that there was no — on the

other features, the other considerations he found that there

was no wanted or unmet need. They didn’t even appeal that

below when they went from the special master to the judge.

Copying. They mentioned that there — they claim that

there is copying. There is no record below. So that when

they address those secondary considerations, when they

77a

Appendix B

address those objective evidentiary issues they can only do

that on the basis of clear error, and that standard is a firm

conviction that a mistake was made. And this record does

not allow you, I believe, to make that kind of — to achieve

that result.

So, we have a prima facie case because we have a

teaching, we have a factual finding of teaching, they have

not attacked that other than as I say a flank basis claim that

it’s a legal conclusion when it isn’t. We have a [34] prima

facie case. It was established on those findings of fact clear

and convincing evidence that this combination was obvious

and once that was found unless they can rebut that with the

secondary considerations, with the objective evidence, which

they failed to do below, they cannot have that judgment

below of nonobviousness affirmed. Thank you.

THE COURT: Was that finding of this insufficient

nexus allowed to stand by the District Court?

MR. COLL: It was.

- Thank you.

THE COURT: Thank you.

The case is submitted.

* * * *

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