DENNISON MANUFACTURING COMPANY, Petitioner, vs. PANDUIT CORP., Respondent.

No. 85-1150

February 20, 1986

ON PETITION FOR A WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

REPLY BRIEF FOR PETITIONER

DUGALD S. MCDOUGALL, Attorney for Petitioner, 135 South LaSalle Street, Chicago, Illinois 60603, (312) 346-0338,

Of Counsel: CLYDE F. WILLIAN, ESQ., One IBM Plaza, Suite 4100, Chicago, Illinois 60611, JAMES P. RYTHER, THOMAS C. ELLIOTT, 135 South LaSalle Street, Chicago, Illinois

INTRODUCTION

Panduit does not even attempt to dispute Dennison's contention that the Federal Circuit substituted its own fact findings for those of the trial court. Panduit suggests, instead, that this failure to follow Rule 52(a) wasn't really important in the final analysis, and that, in other words, the Federal Circuit would have reached the same conclusion even if it hadn't made new findings of fact. But the contrary is true; the Federal Circuit could not have reversed the trial court without first adopting its own version of the facts.

I. THE FEDERAL CIRCUITS IMPROPER FACT FINDING REGARDING EMERY FORMED THE BASIS FOR ITS CONCLUSION THAT THE '146 PATENT IS VALID

Panduit does not dispute Dennison's contention that the Federal Circuit ignored Rule 52(a) when it adopted an interpretation of the Emery prior art patent different than the interpretation of the trial court. Indeed, Panduit completely ignores the inconsistency between Figures 1 and 2 of the Emery disclosure, and concentrates instead on its version of the reasons why the Federal Circuit found the '146 patent valid over Emery. (PB 6-10.) n1 What Panduit fails to consider is that those reasons are based on the Federal Circuit's unauthorized interpretation of the Emery disclosure.

n1 Panduit responding brief, pages 6-10. References to Dennison's petition are, e.g. "(DP 4)", and references to the petition appendix are, e.g.; "(A 17a)".

In fact, if the trial court's fact finding regarding Emery had been accepted, as it should have been, the Federal Circuit could not have reversed the trial court's conclusion that the '146 patent was invalid. This is illustrated most dramatically by the following comparison of the Emery cable tie with Claim 26 of the '146 patent, this claim being one of the 28 claims asserted by Panduit:

[SEE ILLUSTRATION IN ORIGINAL]

A. 26. An integral one-piece cable tie to be tensioned about a bundle of wires and the like, said cable tie comprising an elongated flexible strap,

B. a frame integral with one end of said strap and including an abutment wall, said frame having an entry surface and an exit surface and a strap-receiving opening extending therethrough,

C. a row of teeth disposed on one longitudinal surface of said strap and arranged transversely with respect thereto,

D. a pawl hingedly mounted on and integral with said frame and extending into said strap-receiving opening toward said abutment wall, said abutment wall having a strap-bearing surface disposed toward said pawl and defining therewith a strap-receiving channel, and

E. a tooth on said pawl arranged transversely with respect thereto and disposed toward said abutment wall and shaped complementary to said row of teeth on said strap, said strap being deformable into a loop encircling a bundle of wires with the other end of said strap extending into said strap-receiving channel and through the opening in said frame and therebeyond, said tooth being disposed toward said row of teeth as said strap is tightened about the bundle of wires to a tensioned condition, said tooth in the final tensioned condition being disposed opposite the strap-bearing surface only and wedging the engaged portion of said strap against said strap-bearing surface only, any force tending to withdraw said strap from within said strap-receiving channel in a strap-loosening direction serving to move said tooth into more firm engagement with the engaged ones of said row of teeth firmly to wedge said strap between said strap-bearing surface and said pawl, whereby to prevent inadvertent withdrawal of said strap from said frame and thus to lock said strap in its tensioned condition about the bundle of wires.

This comparison reveals that every limitation of Claim 26 is anticipated by Emery once one accepts the trial court's finding that, as shown in Figure 1 of that patent (DP 11), the inserted strap will be wedged against an opposing frame wall by the pawl. And the trial court's finding was also critical to the conclusion that Claim 24 was invalid since that claim differs only by its reference to multiple teeth which, as even the Federal Circuit concedes, "had nothing to do with allowance of the '146 patent." (A 39a; 19a.)

Panduit has simply sidestepped the issue of the Federal Circuit's failure to apply Rule 52(a). It has not made an adequate response to Dennison's petition.

II. THE FEDERAL CIRCUTI'S CONCLUSION THAT THE '869 AND '538 PATENTS ARE VALID WAS BASED ON ITS REFUSAL TO ACCEPT THE TRIAL COURT'S FINDINGS REGARDING THE DIFFERENCES BETWEEN THE CLAIMED SUBJECT MATTER AND THE PRIOR ART

Panduit's response never comes to grips with a fundamental basis for Dennison's petition, namely that the trial court correctly made fact findings regarding the differences between the claimed subject matter and the prior art, and that the Federal Circuit then refused to accept these findings. Panduit instead makes the irrelevant argument that 35 U.S.C. § 103 requires consideration of the invention "as a whole". Panduit simply refuses to discuss the fact that before the invention "as a whole" can even be considered, fact findings regarding the differences must be made.

Concerning Panduit's respresentative Claim 10 of the '869 patent (A 40a), the issue is whether the trial court found correctly that the "ledge" was the only difference between the claim recitals and the prior art. That the trial court was correct is illustrated dramatically by the following comparison with the prior art Orban patent:

[SEE ILLUSTRATIONS IN ORIGINAL]

A: 10. An integral one-piece cable tie to be tensioned about a bundle of wires and the like, said cable tie comprising an elongated flexible strap,

B. a row of abutments disposed on one longitudinal surface of said strap and arranged transversely with respect thereto,

C. a frame integral with one end of said strap and including an end wall and an abutment wall and a pair of longitudinally extending and spaced-apart side walls inter-connecting said end wall and said abutment wall, said frame having an entry surface and an exit surface and a strap-receiving opening extending therethrough,

D. a ledge on said end wall extending between and inter-connecting said side walls and extending longitudinally from said end wall toward said abutment wall,

E. a pawl disposed within said frame in said strap-receiving opening and pivotally mounted on and integral with said ledge, said abutment wall having a strap-bearing surface disposed toward said pawl and defining therewith a strap-receiving throat, the longitudinal axis of said throat being disposed substantially normal to the longitudinal axis of said strap as molded,

F. and a tooth on said pawl arranged transversely with respect thereto and disposed toward said abutment wall and shaped to engage said row of abutments on said strap, said strap being deformable into a loop encircling a bundle of wires with the free end of said strap extending into said strap-receiving throat and through the opening in said frame and therebeyond, said tooth being disposed toward said row of abutments as said strap is tensioned about the bundle of wires to a tensioned condition and release of said strap causing at least one of said abutments firmly to engage said tooth, any force tending to withdraw said strap from within said strap-receiving throat in a strap-loosening direction serving to move said tooth into more firm engagement with the engaged ones of said row of abutments firmly to grip said strap between said strap-bearing surface and said pawl, whereby to prevent inadvertent withdrawal of said strap from said frame and thus to lock said strap in its tensioned condition about the bundle of wires.

The sole difference between Orban and Claim 10 resides in the recitation of a "ledge", which consists of a base supporting the pawl from underneath (A 4a), as opposed to side support as provided by Orban. Once the trial court had focused on this sole difference, it correctly concluded that one skilled in the art would be led by the teachings of Litwin and others to use such a base (A 50a). The trial court said: "I am unable to tell whether there is a ledge in Orban . . ."; but it is clear that the trial court concluded that the '869 invention "as a whole" was suggested to one skilled in the art by the combined teachings of the references. n2

n2 Litwin was also relied on by the trial court in All States Plastic Mfg. Co., Inc. v. Weckesser Co., Inc., 395 F. Supp. 94, 98 (N.D. Ill., 1973). Panduit is simply wrong when stating that the prior art considered by the Seventh Circuit in the appeal of that case was "substantially more extensive than the prior art available to Dennison in the instant case." (PB 4.)

In the case of the '538 patent, the trial court recognized that the only differences between that tie and the prior art ties involved the interposing of a "hinge" between the pawl and the underlying ledge (A 51a). Again, the invention "as a whole" was considered when the trial court concluded that prior art cable ties such as disclosed by Litwin suggest the invention to one skilled in the art.

The Federal Circuit simply refused to accept the trial court's findings regarding such differences. And the Federal Circuit's error was compounded first by its failure to state its own view of the differences, and then by its failure to consider "The Obviousness of the Differences" as required by this Court in Graham v. John Deere Co., 383 U.S. 1, 24.

Panduit follows that same erroneous course. Nowhere in its response will the Court find any specific reference to a difference other than those discussed by the trial court. The obvious reason for this is that there are no other differences, and it was error for the Federal Circuit to conclude otherwise.

III. DENNISON HAS NOT MADE ANY MISREPRESENTATIONS BEFORE THIS COURT, NOR WERE THERE ANY INCORRECT STATEMENTS MADE TO THE COURT OF APPEALS.

Panduit's assertions at PB 11-14 are diversionary, but do warrant a response to insure that no impression is given that Dennison agrees with Panduit.

The '538 prosecution history reveals that Panduit originally described the hinge of that structure as "non-collapsible", but Panduit then attempted to add a drawing and written description pointing out that:

". . . the hinge 161 tends to collapse and permit the lower end of the pawl 160 to shift to the right as viewed in Fig. 10A . . . this being the ultimate-load position of the parts."

Panduit then argued that:

"The specification has been amended to correct certain informalities therein, and there has been added further descriptive material and a new sheet of drawing illustrating a further inherent property of the cable tie originally disclosed and claimed herein." (Emphasis supplied.)

and that:

"In the original drawings and specification there were illustrated and described a sequence of several configurations assumed by the various parts of the cable tie 100 during the application thereof about a bundle, as indicated, for example, in Figs. 7-10 of the drawings. The amendment and letter to the Chief Draftsman filed on September 4, 1970 simply presented the next in this sequence of configurations which would obviously and necessarily result when additional force in the direction of the arrow 175 was applied to a cable tie strap disposed in the configuration illustrated in FIG. 10. It is respectfully submitted that these amendments in no way alter the description of the physical cable tie structure which is the subject matter of the claims on appeal, but simply clarify and explain the description of the behavior of this structure as a result of the inherent properties of the device." (Emphasis supplied.)

Dennison's statements to this Court and to the Federal Circuit were 100% accurate, and nothing said by Panduit's counsel in colloquy before the trial court can change that fact. But more significantly, this petition should be reviewed because of the critical errors made by the Federal Circuit, and not on the basis of such secondary disputes.

CONCLUSION

It is apparent that the decision of the Federal Circuit resulted from its refusal to accept key fact findings, findings which were based on competent evidence. Panduit's response to Dennison's petition does not deal with that question, but focuses instead on unrelated aspects of the case.

Dennison's petition should be granted to avoid a substantial miscarriage of justice.

Respectfully submitted,

DUGALD, S. MCDOUGALL, Attorney for Petitioner, 135 South LaSalle Street, Chicago, Illinois 60603, (312) 346-0338,

Of Counsel

CYLDE F. WILLIAN, ESQ., One IBM Plaza, Suite 4100, Chicago, Illinois 60611,

JAMES P. RYTHER, THOMAS C. ELLIOTT, 135 South LaSalle Street, Chicago, Illinois