*1 wa; Wailake/Wylacki; Sinkyone/Sinkiene; Wintun. Wiyot/Humboldt; of such allotted, lineal descendants 1, summary judgment 1949. living on October The motions persons, 7. A, attachments not listed on plaintiffs of all on composed plaintiffs This class is denied, prejudice without B, C, D and E are B, hereof part which is to be attachment three months after this to renewal within Clerk, to the and to furnished to be final, by on a certification order becomes jointly, defendants practicable, by extent belief, to the best of his counsel of record days within 30 of this order. motion, facts summarized in living on June who 3. Persons written determined on oral or be blood, as have at least Vi Reservation hearing, qualifica- demonstrate either the below, on the defined have forebears born one of the stan- plaintiff tion of the under the court or adopted by were resident on the Res- dards Reservation and 2, qualification plaintiff denial of to June years prior ervation for 15 manifest- facts of the case be special on composed plaintiffs This class is unjust. ly C, part attachment which is to be a hereof of the furnishing by 8. The defendants Clerk, and to be furnished to the to the C, D, A, B, attachments above-mentioned practicable, by jointly, extent defendants E, to the prejudice shall be without days within 30 of this order. challenge this deci- rights of defendants to blood, 4. Plaintiffs of at least Vi Indian substi- any part Recently sion or thereof. 1, 1949 and before Au- born after October defendant tuted and former counsel for 9, or would gust parent 1963 to who is expected cooper- are Hoopa Valley Tribe been, alive, qualified have when Indian of lost in the ate so that no time will be any foregoing the Reservation under of the to become attach- preparation of the lists 1, 3, been paragraphs previously or has to fur- Defendants are ments A-E hereto. held entitled to recover in this case. original with the nish Clerk each of these attachments. copies of composed plaintiffs This class is on D, which hereof part attachment summary motions for plaintiffs’ 9. The Clerk, and to be furnished to the granted provid- are judgment denied practicable, extent jointly, defendants ed above.” within 30 of this order. days 9,
5. Plaintiffs born on or after August
1963, blood, who are of at least Vi Indian
derived exclusively qualified par- from parents
ent or who is or would have been qualified
when alive a Indian of the Reser- any foregoing para-
vation under 1, 3, 2 or held graphs previously JACK, INC., or has been KANSAS Appellant/Cross-Appellee, entitled to recover in this case. v. This class is on composed plaintiffs E, part attachment which is to be a hereof Charles J. and Kuhn Manufactur KUHN Clerk, and to be furnished to the ing Company, Inc., Appellees/Cross- jointly, extent defendants practicable, by Appellants.
within 30 of this order. days 83-638, Appeal Nos. 83-643. blood, herein, 6. Reservation as used Appeals, United States Court of following shall mean the blood of the tribes Federal Circuit. Yurok, and bands: Grouse Hoopa/Hupa; Oct. Creek; Hunstang/Hoonsotton/Hoonsolton; Miskut/Miscotts/Miscolts; Redwood/Chilu-
la; Sermalton; Saiaz/Nongatl/Siahs; Fork; Karok; Tolo- Tish-tang-atan;
South *3 Mo., City, Kansas Day,
William Bruce argued, appellant/cross-appellee. Cal., Cline, Pasadena, argued, E. Roderick appellees/cross-appellants. MARKEY, Judge, RICH Before Chief BENNETT, Judges. Circuit MARKEY, Judge. Chief judgment from a of the U.S. Dis- Appeal District of Cali- trict Court for Central fornia that claims 3,566,667 are (Hagerty patent) Patent U.S. invalid, Hagerty (Hag- that William K. commit on the Patent erty) did not fraud (PTO). We affirm. and Trademark Office
BACKGROUND Hagerty patent, appli- for which the cation was filed on October 2,1971, which issued on March discloses and device, straightening claims a vehicle frame Fig. best illustrated in 1: *4 30, Chain one end of which is connected anchor chain 32 which is fastened to the 18,19, to the frame to floor. straightened, passes Spaced openings over and allow adjustment of the fulcrum 25, 45, pulley fulcrum and U-bar pulley idler pulley and force 37 to pulls heights. accommodate at various pulley 55. It is firmly fastened near the legs front of posts 56, 11 and 12. Yoke Hagerty (Kuhn) and Charles J. Kuhn 55, carrying force pulley travels in the di- were once co-workers. Kuhn showed Hag- 57, rection of arrow response to a power erty post an anchor used as an anchor chain 60, ram to cause the force pulley 55 to 1967, tie-down in April post (Kuhn and a rotate and exert a pull on chain 30. A post) for frames in straightening July of 37, U-bar attached to the sup- hub which post The Kuhn is shown in Kuhn’s 25, ports the fulcrum pulley receives an Exhibit 165: claims holding of Decision and Order application on patent Kuhn filed 1968, 20, patent and received invalid under Hagerty and 11 of the on June post Kuhn 29, 1971. 3,589,680 on June Patent (1) U.S. the Kuhn 1032 in view of: 35 U.S.C. § 1,785,923 (Wade) or Patent post and U.S. 1972, filed a reissue September In 3,492,855(Wylie); (2) the Kuhn U.S. Patent from, re- and copying claims application with, Eck, (3) Wylie; be declared and Wade or U.S. interference and questing an 3,612,- Patents Patent and U.S. 1,810,680 (4) (Rothgarn); Rothgarn Patent (Berendt). An in- 3,566,666 (Eck) and (5) 1,553,609 (Grau); and Patent U.S. reis- between Kuhn’s proceeding terference 3,340,720 Patent Wylie or Eck and U.S. the Eck and Berendt application sue (Chartier) post. or the Kuhn here. without effect was terminated patents that Kuhn Judge Kelleher further held was settled Kuhn-Hagerty interference commit- had not established that non-ex- Kuhn a agreement granting an ted fraud on the PTO. Hagerty patent. clusive license under n Jack, Kuhn on assignee, sued Kansas Kansas Jack’s appeal attacks 1979, 12, infringement February In a holding invalidity. separate appeal, infringe- Kuhn conceded Hagerty patent. fraud, (1) Kuhn attacks no pled but of claims ment (2) success, a finding (3) of commercial as an affirmative defense.1 license presentation the court’s refusal to allow limited to the license defense A trial “prior use” and “on sale” defenses under 35 re- judge 1980. The trial January held in *5 102. on the is Having prevailed U.S.C. § limit- because the license jected the defense sue of to which 2 3 validity, attacks and selling and the making, using, to ed Kuhn relate, Kuhn has standing no to make those making at the time that device Kuhn was by way appeal. attacks was not the That device was executed. when marketing accused device Kuhn
sued. ISSUES issues, judge Whether the trial erred in remaining
After trial on the 1, 2, (1) that and 11 are invalid under Kelleher entered a Memorandum Robert J. claims pulling patent imparts 26 claims. ment a force on the of the ram The contains chain; representative: 1 is and Claim connecting anchoring transmitting the other power a means for actuated unit for “In a proximity a dam- pulling desired load such as end of the anchor chain in close to force to a pulling restraining and aged pulley applying like a chain vehicle or the via a the for to said unit including im- secured to an substantially equal pulling an anchor chain to that of the force anchoring point having and another movable end, applied pulley force to the load via said when comprising: said unit actuated, whereby the forces exerted the ram is any independent of connec- a base which is essentially equalized.” on the unit are pulled on other load to be tion members to the chain; pulling the than provides: 103 § having power actuated ram first a though patent may the “A not be obtained arranged to have the distance second ends and identically or de- is not disclosed invention axially along prede- a varied between said ends title, scribed set forth in section 102 of this longitudinal axis of the ram itself termined subject matter if the differences between the actuated; when patented prior sought art are to be and the mounting base the ram on the means for subject as a whole such that the matter the ends of axial movement between such that time the have been obvious at the pre- controllably along said directed is the ram person having ordi- made to a invention was direction; axial determined subject nary in the art to which said skill base, mounting pulley a means Patentability pertains. not be shall matter direction, chain, change pulling its receive negatived by manner in which the inven- pulling re- impart on the chain a force tion was made.” pulley; by ceived pulling connecting chain in means axial move- such that said to the ram relation
H49 103; (2) did not commit Rothgarn discloses a frame straightening § having hydraulic fraud on the device a PTO. ram for extend- a force ing pulley top of the device. A pulley changes fulcrum the direction of OPINION the force. The pulling only cable is the connection between the device and the load. 1. Validity tool, Grau discloses a hoisting pulling In resolving the obvious/nonobviousness a windlass including top mounted on of a issue, Judge Kelleher looked to the three frame. A fulcrum pulley changes the di- (scope factual determinations and content rection of force and a grapple connects the art, prior differences prior between art pulley object. fixed invention, and claimed and level ordinary straightening Chartier discloses frame art) skill in the set forth in Graham v. John having hydraulic device ram mounted on Co., Deere 86 U.S. S.Ct. a post and pulling a chain. The pass- chain USPQ 459, 15 L.Ed.2d (1966). es over a fulcrum pulley to change the Kansas Jack challenges here not those de- direction of force. height of the ram terminations, legal but the conclusion based and fulcrum pulley adjustable. on them. Wade, The Kuhn post, Wylie, and Eck The relevant art includes the Kuhn were found more pertinent than the prior Wade, Eck, post, patents Wylie, by cited the PTO. Grau, Rothgarn, and Chartier. Judge Kelleher found the differences be- The Kuhn post, supra, is a free standing tween the and the claimed in- post connected to the load through pull- vention were (1) two: Hagerty relocated ing provided chain. Force is by hydraulic hydraulic ram from the chain to the ram. A vertically adjustable fulcrum pul- post; (2) Hagerty connected the anchor ley changes direction of the force. An chain close to the fulcrum pulley, elimi- anchor chain is connected to the floor. nate bending moments. (1) Difference Wade discloses a frame straightening de- Eck, disclosed Wylie, and Chartier. Dif- *6 having vice a post rigidly secured to a hori- (2) ference is disclosed by Wylie, Wade, and zontal bottom member. Force is provided Grau. aby turnbuckle which connects a car frame Judge Kelleher found the level of ordi- post through a clevis and pivot pin. nary skill in the art to be that of a mechani- A rod connects the pivot pin to a floor cally skilled individual familiar with the anchor. design of devices in the industry. Wylie discloses a frame straightening de- Kansas argues Jack (1) that hypothetical including vice connected to a car devices were improperly relied upon, (2) the through pulling frame chain. A hydraulic invention was held to have been obvious ram is mounted on the post and an anchor because it produce did not unusual or sur- chain is connected to the post, to balance results, prising (3) so-called “secondary the force of the chain pulling and thus considerations” were disregarded. None of (forces eliminate bending tending moments arguments those persuasive. device). adjust- to overturn Vertical the post ment on of the ram and chains
permits pulls
heights.
various
devices,
Drawings
hypothetical
by selecting
created
elements found in vari
Eck
a frame straightening
discloses
de-
references,
ous
were introduced
vice
ram
having
hydraulic
vertically
and a
Hager
into evidence. To the extent
that
adjustable
pulley
fulcrum
mounted on a
ty’s own disclosure was
post.
employed
guide
receives a
pulley
pulling chain
draftsman,
that procedure
was an im-
by actuating
tensioned
the ram.
An in-
invention was made.
In re
the time the
hindsight.
employment
proper
greater”
“an effect
that did achieve
339, 343, 50
& vention
Oust.
Pavlecka,
F.2d
surprising
re-
“unusual
USPQ 152,
produced
154-55
or that
1406, 138
Pat.App.
to have been
indicate,
of course be held
not
how-
sults” could
does
(1963). The record
those facts. Evi-
light
conclusion
nonobvious
ever,
obviousness
achievements,
like evidence
dence of such
of the sketches
consideration
dictated
need,
suc-
commercial
meeting
longfelt
contrary,
On
devices.
hypothetical
disbelief, etc., may when
cess, overcoming
note that
was careful to
Kelleher
Judge
of nonobvious-
a conclusion
present support
on
the references
teachings of
was the
Stratoflex,
Corp.,
Aeroquip
Inc. v.
ness.
conclusion,
hy-
not the
his
he rested
which
(Fed.Cir.1983). Ab-
1151 Curtiss, v. of evi- 433 F.2d 57 Oust. & totality the that the record on this USPQ 532, of 167 reversal 546-47 require Pat.App. inadequate to dence Miller, (1970); PTO, of The evidence Fraud on the holding. See obviousness the the solely (1976). of JPOS 271 intent element of consisted success commercial fraud, was no evi- however, There may by be show proven of units sold. number in market share, growth of ing consequences of acts the natural of market of dence by sold oth- units share, earlier which are the ac replacing presumably of intended of amounts, no evidence negli tor. made gross or of dollar Statements with ers the merits of gence sales their truth may between as to establish such a nexus circumstances, con- Norton, 795-96, Under such invention. intent. at F.2d evidence, the totality the of of USPQ sideration the duty at 545. The of candor owed commercial suc- to relating that including being uncompromising, PTO it would deal a the holding that cess, require does not duty proof deathblow to that if direct of at nonobvious would have been invention wrongful required. intent were At the in to one skilled it was made the time time, thought same that to be something art. stated, prior true when or a piece of decision, thought unimportant PTO’s Fraud was later determined to untrue have been important, will not automatically and to hold the refusal appeals from Kuhn alone inequitable establish that fraud or PTO fraud on the for responsible conduct occurred. The finder must fact oral explained argument, at hope, in the fees attorney motion that a successful evaluate all of the facts and circumstances be after might filed in the in each case. That was here. appeal incurred done on the No motion for at- prevailing issue. Hager- Kuhn submitted no that evidence presented fees was trial court. torney reason, had ty any during prosecution raised fraud Because Kuhn could have of his his state- application, disbelieve reply Hagerty’s appeal, its in issue in brief ments to the PTO about Proof safety. at upon contingent consideration reversal trial may that those statements have been issue, validity we need not decide in untrue, true, objectively universally or not exists it standing whether to raise this case cannot to estab- retroactively employed a separate appeal. by way negli- lish they gross that were made with chains gence as to their truth. That fraud, certain alleging points In Kuhn posts flew in of Kuhn’s about some tests during prosecution statements Hagerty’s prepared for trial did not establish or indi- in application that resulted issuance a universality cate of that If phenomenon. to a Hagerty patent, failure with invention did Hagerty’s experience his alleged art. The statements disclose not there phenomenon, indicate that safety using level higher did, no it cannot be said evidence device, chain and because the guilty negligence that Hagerty gross upon breakage about or disconnec- fly not experience. in describing that being tion of chain from frame developed straightened. Evidence for and The record does not establish con- trial demonstrated the
presented Kelleher disregarded Hagerty’s Kelleher says Judge ignored trary. *8 failure to disclose the Kuhn to post the failure disclose the Kuhn Hagerty’s post to PTO. the contrary, On he that found Kuhn PTO. to the had failed to show that “in Hagerty misrep resenting ... the prior clear acted proved by Fraud must be ... with ... evidence, calculated convincing party as recklessness”. On the whole record, “misrepresenting prior it carries burden. Norton the art” had serting heavy post. sum, to disclose the Kuhn Judge failure In Kelleher to include found the evi- that he had considered Hagerty testified dence insufficient to support holding of merely a “car stand” and post Kuhn fraud. are on presented appeal We Kuhn’s Kelleher Judge to adequate unrelated his invention. with no reason for overturning testimony that credi- considered that determination. obviously to the claimed though Hagerty ble even standing the first free post PTO his was DECISION Hager- no evidence that
post. There was appealed judgment is affirmed in all the Kuhn patent was aware of ty’s counsel respects. applica- of during prosecution post AFFIRMED. is there evidence that tion in the PTO. Nor experienced or in the Hagerty was trained RICH, Judge, Circuit in dissenting part. prior is is art. evaluation what not later, post, years That the Kuhn was deter- agree I majority opinion with the except art, prior prior here the closest mined that part to “Fraud” section art, alone establish that does not that applicant, failure Hagerty, a similar evaluation dur- should have made disclose knowledge his of the Kuhn prosecution Where ing application. the PTO was not sufficient evidence to sup- knew, known, one who or should have that port a holding of fraud. If it true that art, information, piece other his attorney was unaware post, material, i.e., important would be that is irrelevant. The responsibility rested decision, a making PTO in its failure on Hagerty to tell his attorney. It is also that art or information can be suf- disclose irrelevant not “trained or proof ficient intent existed wrongful experienced in the evaluation of what PTO, to mislead the may result in a and is not prior art.” It is incredible me finding of what has come to be that Hagerty called did not know that the Kuhn “fraud” finder, on PTO. The fact post was the how- closest to his thing invention ever, must only determine not that the un- whether or not he was a legal expert material, disclosed art or information was meanings “prior refined art.” but that the one charged with non-disclo-
sure knew or should have known of its
materiality the time. It is on this latter
element that Kuhn failed to carry its bur-
den.
Kuhn attacks words the finding on
fraud, asserting that a reference to “scien-
ter” and “calculated recklessness” indicates
a failure to apply the “gross negligence” Norton,
standard of supra. We review
judgments, however, not words.
Kelleher’s statement in the finding that prove
Kuhn failed to “calculated reckless-
ness” not does establish that Kuhn did
prove “gross negligence”, nor it does estab-
lish on the whole record that an improper
standard was applied in fact in evaluating evidence, nor does constitute reversi-
ble error on this record.