TW Kutter, Inc. v. Koch Supplies, Inc.
| Decision Date | 17 April 1986 |
| Docket Number | No. 83-0547-CV-W-1.,83-0547-CV-W-1. |
| Citation | 634 F. Supp. 705 |
| Parties | T.W. KUTTER, INC., Plaintiff, v. KOCH SUPPLIES, INC., and Multivac Sepp Haggenmuller KG, Defendants. |
| Court | U.S. District Court — Western District of Missouri |
John M. Collins, Warren N. Williams, Schmidt, Johnson, Hovey & Williams, Kansas City, Mo., for plaintiff.
Carter H. Kokjer, Kokjer, Kircher, Bradley, Wharton, Bowman & Johnson, Kansas City, Mo., for defendants.
This patent case presents two questions, both separated for determination pursuant to Rule 42(b) of the Federal Rules of Civil Procedure, in regard to (1) the validity and (2) the alleged infringement of the patent-in-suit.
Exemplary compliance with this Court's pretrial and posttrial directions established a substantial area of undisputed fact. The parties also filed excellent pretrial and post-trial briefs. Those briefs made it apparent before any evidence was adduced that the question of how the applicable standard of proof should be applied was a disputed question of paramount importance.
Defendants' pretrial brief argued that it would establish by "clear and convincing evidence" that the patent-in-suit was invalid under both Section 102(b) and Section 103.1 Plaintiff, on the other hand, argued in its pretrial brief that the "defendants bear an extremely heavy burden of proof" (emphasis added) for the reason that "defendants rely heavily upon their own alleged prior uses of the patented invention, and offer only uncorroborated oral testimony of employees as proof and that under these circumstances, the standard is even higher, and approaches `beyond a reasonable doubt'." (Emphasis in original). Pl. Pretrial Brief at 11.
The question of what standard of proof should be applied was again placed in focus by plaintiff's opening statement on the first day of trial. Plaintiff there made direct reference to The Barbed Wire Patent, 143 U.S. 275, 12 S.Ct. 443, 36 L.Ed. 154 (1892), which, of course, could be read to impose a beyond reasonable doubt standard of proof under the circumstances of this case.2
It is thus clear that the parties, although in agreement that the clear and convincing standard is applicable to this case, have from the outset of this litigation been in substantial disagreement in regard to how the clear and convincing evidence standard of proof should be defined and applied to the evidence adduced at trial. Is the plaintiff right in describing that standard as imposing an "extremely heavy" burden which at least approaches the beyond reasonable doubt standard stated in The Barbed Wire Patent and Deering v. Winona Harvester Works, 155 U.S. 286, 301, 15 S.Ct. 118, 123-24, 39 L.Ed. 153 (1894)? Or are the defendants right in proposing that plaintiff's "extremely heavy" descriptive label of the applicable standard be stricken?
Those questions are important questions. For it may fairly be said that this case presents any number of close questions on the facts. I turn now to the standard of proof that will be applied in this case.
Both parties rely on Chief Judge Markey's opinion for the panel in E.I. du Pont de Nemours v. Berkley & Co., Inc. 620 F.2d 1247 (8th Cir.1980). That case concluded that the "burden of proof of a prior use is satisfied only by evidence clear, cogent, and convincing." That case appropriately noted that "oral testimony alone has been held insufficient to prove a prior use," citing Zachos v. Sherwin-Williams Co., 177 F.2d 762, 763 (5th Cir.1949). Berkley, 620 F.2d at 1261. However, Chief Judge Markey immediately made clear that the "more widespread view ... is that unsupported oral testimony can be sufficient but must be regarded with suspicion and subjected to close scrutiny." Id. at 1261.3
Although Zachos cited Smith v. Hall, 301 U.S. 216, 57 S.Ct. 711, 81 L.Ed. 1049 (1937), the Fifth Circuit nevertheless concluded that "we can find no relaxation or modification" of the proof beyond reasonable doubt rule stated in The Barbed Wire Patent, supra; Deering v. Winona Harvester Works, supra; and in Eibel Co. v. Paper Co., 261 U.S. 45, 43 S.Ct. 322, 67 L.Ed. 523 (1923).4
Berkley & Co., Inc., however, cited Smith v. Hall, supra, to support its view of the "more widespread rule" and concluded that the Court in that case had rejected the Zachos court's reading of the beyond reasonable doubt standard stated in the early Supreme Court cases. We agree that Smith v. Hall did relax and modify the proof beyond doubt standard stated in the earlier Supreme Court cases. Smith v. Hall read the earlier Supreme Court cases as only establishing a rule that "oral testimony ... without corroboration, ... is insufficient to establish prior use." (Emphasis added). 301 U.S. at 222, 57 S.Ct. at 714. Most importantly, it must be noted that Smith v. Hall in affirming a finding of invalidity, concluded on its facts, that contemporary documentary evidence contained in the record, did, in fact, "afford convincing corroboration of the oral testimony that the incubator in use in Brooklyn immediately preceding the filing of the application, ... employed the method of the Smith claim." 301 U.S. 226, 57 S.Ct. at 716.5
The recent controlling decisions of the Court of Appeals for the Federal Circuit have abandoned the use of all the verbal variances formerly used by various courts to state the applicable standard of proof in favor of the more simply stated "clear and convincing" standard of proof. In its recent decision in Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082 (Fed.Cir.1985), the burden of proof standard to be followed by all district courts throughout the federal system was stated as follows:
The statute mandating a presumption of validity, 35 U.S.C. § 282, places the burden of proving facts compelling a conclusion of invalidity on the party asserting invalidity. This court has said the burden of proving facts compelling a conclusion of patent invalidity must be carried by clear and convincing evidence. SSIH Equipment, S.A. v. U.S. Intern. Trade Comm'n., 718 F.2d 365, 375, 218 USPQ 678, 687 (Fed.Cir.1983). The role of the court is to determine whether the validity challenger carried that burden.
Panduit Corp. added that if "the court determines that that burden was not carried, it need only so state" and that if "the court determines that that burden was carried, it should declare the patent invalid," citing Lindemann Maschinenfabrick GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1452 n. 1, 221 USPQ 481, 484 n. 1 (Fed.Cir.1984).6Id. at 1096.
It is thus clear that the Court of Appeals for the Federal Circuit has eliminated all variances in its statement of the applicable clear and convincing standard of proof. The Federal Circuit's adoption of uniform language as to how the standard should be stated does not, however, fully answer the question of how that standard should be applied by the finder of the facts in a particular case. I turn now to that question.
As we noted, the parties in this case are in general agreement that this Court must apply the clear and convincing evidence standard to the evidence adduced in this case. The parties do not disagree that such a standard may be said to occupy some point on the spectrum between the preponderance of the evidence standard generally applicable to civil cases and the proof beyond reasonable doubt standard that is constitutionally applicable to criminal cases.
Plaintiff's proposed conclusion of law, however, would have this Court label and define the clear and convincing evidence standard as one which imposes an "extremely heavy burden of proof." Plaintiff's reference to The Barbed Wire Patent case and its progeny, suggests that plaintiff believes that the clear and convincing standard should, at the very least, be considered to be much closer to the reasonable doubt standard than the preponderance of the evidence standard. Defendants' argument reflects defendants' opposing view that the clear and convincing standard may not properly be considered to occupy a point as close to the reasonable doubt standard as plaintiff argues.
We agree with the defendants that no descriptive label should be added to the applicable clear and convincing evidence standard of proof. For we do not believe that any fixed point on the spectrum can be stated with precision in regard to where that standard may be said to rest. We are satisfied, however, that the clear and convincing standard is a quite different standard than the two other standards that occupy the respective ends of the spectrum.7
We turn now to the most recent Supreme Court cases in which the clear and convincing standard of proof was discussed and applied.
On June 8, 1984, the Supreme Court handed down its second opinion in Colorado v. New Mexico, 467 U.S. 310, 104 S.Ct. 2433, 81 L.Ed.2d 247 (1984). In its first opinion, Colorado v. New Mexico, 459 U.S. 176, 103 S.Ct. 539, 74 L.Ed.2d 348 (1982), decided two years earlier, the Court sustained exceptions to a special master's report and remanded the case for further proceedings. In Colorado v. New Mexico II, the Court stated that when Colorado v. New Mexico I was decided in 1982, "the Court made clear that Colorado's proof would be judged by a clear-and-convincing-evidence standard." 467 U.S. at 316, 104 S.Ct. at 2438. The Court added that: Id. at 316, 104 S.Ct. at 2438. Colorado v. New Mexico II cited and relied on Addington v. Texas, 441 U.S. 418, 99 S.Ct. 1804, 60...
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