319 U.S. 359 (1943), 696, Altvater v. Freeman

Docket Nº:No. 696
Citation:319 U.S. 359, 63 S.Ct. 1115, 87 L.Ed. 1450
Party Name:Altvater v. Freeman
Case Date:May 24, 1943
Court:United States Supreme Court

Page 359

319 U.S. 359 (1943)

63 S.Ct. 1115, 87 L.Ed. 1450




No. 696

United States Supreme Court

May 24, 1943

Argued April 19, 1943




1. The issue of validity may be raised by a counterclaim in a suit for infringement of a patent. P. 363.

2. The requirements as to the existence of a case or controversy in suits in the federal courts are no less strict in suits under the Declaratory Judgments Act than in others. P. 363.

3. The requirements as to the existence of a case or controversy are met where payment of a claim is demanded as of right and payment is made, but where a right to recover the amount paid or to challenge the legality of the claim is preserved by the coercive nature of the exaction. P. 365.

4. Although the decision of noninfringement of the patent disposed of he bill and answer in this suit, it did not dispose of the counterclaim, which raised the question of the validity of the patent, and the Circuit Court of Appeals erred in treating the issues raised by the counterclaim as moot. Pp. 363, 365.

130 F.2d 763 reversed.

Certiorari, 318 U.S. 750, to review a decree which modified and affirmed a decree dismissing the bill and granting the prayer of a counterclaim in a patent case.

Page 360

DOUGLAS, J., lead opinion

MR. JUSTICE DOUGLAS delivered the opinion of the Court.

This suit, lodged in the federal District Court by reason of diversity of citizenship, was brought by respondents for specific performance of a license agreement under reissue patent No. 20,202 issued to Freeman in 1936 for a cut-out machine for shoe uppers, it being alleged that the reissue patent was substituted under the agreement for the original patent -- No. 1,681,033.1 The bill alleged that, contrary to the provisions of the license agreement, petitioners were manufacturing and selling certain devices which infringed the reissue patent, and that they had not confined themselves to the territory in which the license agreement permitted them to make sales of the patented article. The bill asked for specific performance, for an injunction, and for an accounting. Petitioners answered denying generally the allegations of the bill and setting up various defenses. They charged, among other things, that the two reissue patents obtained on the surrender of the original patent were invalid, and they asserted that, while they had made payments of royalties under the reissue patents, they did so in protest, and that those payments did not substitute the reissue patents for the original patent under the license agreement. Petitioners also filed a counterclaim praying for a declaratory judgment. They alleged in the counterclaim that the license agreement did not cover the reissue patents; that they were willing to pay royalties if the agreement covered the reissues, and, if they

Page 361

were valid; that the reissues were not valid, but that, if petitioners cancelled the license agreement and refused to pay any royalties under it, they would be subject to infringement suits. They accordingly alleged that, in order to protect the business built up in good faith under the license, an adjudication of the controversy and dispute between the parties was necessary. They prayed that the reissue patents be declared invalid, but that, if they were held to be valid, the license agreement be extended to them. In a reply to the counterclaim, respondents denied its essential allegations and alleged, among other things, that there was no justiciable controversy between the parties as set forth in the counterclaim, and therefore that petitioners had no right to the declaratory judgment.

A brief summary of earlier litigation between the parties will help sharpen the outlines of the present controversy. The license under the original patent was executed in 1929. Shortly thereafter, petitioners marketed a machine known as [63 S.Ct. 1117] Model T which respondents claimed violated the agreement. They accordingly brought a suit for specific performance of the agreement, charging violation of its covenants and infringement. The court held in Freeman v. Altvater, 66 F.2d 506, that the validity of the patent was not in issue, since petitioners, being licensees, were estopped to assert its invalidity. The court concluded, however, that the machine did infringe. An accounting was ordered. Respondents endeavored later on to have the accounting cover the accused devices involved in the present suit. That effort was not successful. Meanwhile, Premier Machine Co. v. Freeman, 84 F.2d 425, was decided. It was a suit for infringement of the original patent, the defense being invalidity. Of the 94 claims of the patent, 26 were involved in that suit. The court held that only three of that group were valid. That was in June, 1936. In November, 1936, Freeman filed a disclaimer

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covering all claims held invalid in the Premier Machine case. Later in 1936, he surrendered his original patent and obtained reissue patents. The invalidity of the reissue patents was asserted in the present suit on the grounds, among others, that the disclaimer was improper and that the reissue patents were devoid of patentable subject matter.

The District Court, after a hearing found that the accused devices did not infringe respondents' reissue patents, that the decision in the Premier Machine case, 84 F.2d 425, holding only three of the twenty-six claims of the original patent valid, constituted an eviction under the license agreement, that the license agreement terminated with the surrender of the original patent in 1936, that petitioners did not make the reissue patents the basis for a new license contract, that, while petitioners, since the date of the reissue patents, paid certain royalties, they did so under protest and pursuant to the injunction which was entered in the first Altvater case, 66 F.2d 506, and that the reissue patents were invalid. The District Court accordingly dismissed the bill of complaint and granted the prayer of the counterclaim. The Circuit Court of Appeals affirmed (129 F.2d 494), holding that the District Court was warranted in concluding that the original license agreement was at an end and that the continuance of royalty payments did not indicate an acceptance of the reissue patents to form a new contract, that the issue of infringement involved only claim 6 of reissue patent No. 20,202, the charges that other claims were infringed having been abandoned, and that the accused devices did not infringe. On a petition for rehearing and motion to modify the opinion and revise the decree, the Circuit Court of Appeals ruled that, when the District Court found no contract of license and no infringement, the other issues became moot, and there was no longer a justiciable controversy between the parties. 130 F.2d 763. It accordingly modified the

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decree by striking from it the provisions which held that Freeman was evicted from his monopoly by the decision in the Premier Machine case and that the reissue patents were invalid, and the further provision which resolved the issues on the counterclaim in favor of petitioners, saying that it expressed no opinion on those questions. The case is here on a petition for writ of certiorari which we granted because of the apparent misinterpretation by the Circuit Court of Appeals of our decision in Electrical Fittings Corp. v. Thomas & Betts Co., 307 U.S. 241.

That case was tried only on bill and answer. The District Court adjudged a claim of a patent valid although it dismissed the bill for failure to prove infringement. We held that the finding of validity was immaterial to the disposition of the cause, and that the winning party might appeal to obtain a reformation of the decree. To hold a patent valid if it is not infringed is to decide a hypothetical case.2 But the situation in the present case is quite different. We have here not only bill and answer, but a counterclaim. Though the decision of noninfringement disposes of the bill and answer, it does not dispose of the counterclaim, which raises the question of validity. Sola Electric Co. v. Jefferson Electric Co., 317 U.S. 173, is authority for the proposition that the issue of validity may be raised by a counterclaim in an infringement [63 S.Ct. 1118] suit.3 The requirements of case or controversy are, of course, no less strict under the Declaratory Judgment Act, 48 Stat. 955, 28 U.S.C. § 400, than in case of other suits. United States v. West Virginia, 295 U.S. 463, 475; Ashwander v. Tennessee Valley Authority, 297 U.S. 288, 325; Aetna Life Ins. Co. v. Haworth, 300 U.S. 227; Maryland Casualty Co. v. Pacific Coal Co., 312 U.S. 270. But we are of the view that the issues raised by the present counterclaim

Page 364

were justiciable, and that the controversy between the parties did not come to an end (United States v. Alaska S.S. Co., 253 U.S. 113, 116) on the dismissal of the bill for noninfringement, since their dispute went beyond the single claim and the particular accused devices involved in that suit.

It is said that, so long as petitioners are paying royalties, they are in no position to raise the issue of invalidity -- the theory being that, as licensees, they are estopped to deny the validity of the patents, and that, so long as they continue to pay royalties, there is only an academic, not a real, controversy between the parties. We can put to one side the questions reserved in the Sola Electric Co. case -- whether, as held in United States v. Harvey Steel Co., 196 U.S. 310, a licensee is estopped to challenge the validity of a patent, and, if so, whether that rule of estoppel is one of local law or of federal law. In the present case, both the District Court and the Circuit Court of Appeals have found that the license agreement was terminated on the surrender of the original patent, and was...

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