TECHNOGRAPH PRINTED CIR., LTD. v. Martin-Marietta Corp.

• Decision Date: 20 March 1972
• Docket Number: 14299 and 14374.,Civ. A. No. 13358,14084
• Parties: TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Incorporated, Plaintiffs, v. MARTIN-MARIETTA CORP., Defendant. TECHNOGRAPH PRINTED CIRCUITS, LTD., et al., Plaintiffs, v. WESTINGHOUSE ELECTRIC CORPORATION, Defendant. TECHNOGRAPH PRINTED CIRCUITS, LTD., et al., Plaintiffs, v. INTERNATIONAL TELEPHONE AND TELEGRAPH CORP., Defendant. TECHNOGRAPH PRINTED CIRCUITS, LTD., et al., Plaintiffs, v. McDONNELL AIRCRAFT CORP., Defendant.
• Court: U.S. District Court — District of Maryland

340 F. Supp. 423

TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Incorporated, Plaintiffs, v. MARTIN-MARIETTA CORP., Defendant.

TECHNOGRAPH PRINTED CIRCUITS, LTD., et al., Plaintiffs, v. WESTINGHOUSE ELECTRIC CORPORATION, Defendant.

TECHNOGRAPH PRINTED CIRCUITS, LTD., et al., Plaintiffs, v. INTERNATIONAL TELEPHONE AND TELEGRAPH CORP., Defendant.

TECHNOGRAPH PRINTED CIRCUITS, LTD., et al., Plaintiffs, v. McDONNELL AIRCRAFT CORP., Defendant.

Civ. A. Nos. 13358, 14084, 14299 and 14374.

United States District Court, D. Maryland.

March 20, 1972.

John W. Avirett, 2d, Piper & Marbury, Baltimore, Md., Sidney Bender, and Leventritt, Lewittes & Bender, New York City, for plaintiffs.

Benjamin C. Howard, and Miles & Stockbridge, Baltimore, Md., for defendant Martin-Marietta Corp.

Benjamin C. Howard, Miles & Stockbridge, Baltimore, Md., Edward F. McKie, Jr., and Birch, Swindler, McKie & Beckett, Washington, D. C., for defendant, Westinghouse Electric Corp.

Norwood B. Orrick, Venable, Baetjer & Howard, Baltimore, Md., Dana M. Raymond, and Brumbaugh, Graves, Donohue & Raymond, New York City, for

defendant International Telephone and Telegraph Corp.

Jervis Spencer Finney, Ober, Grimes & Shriver, Baltimore, Md., Albert E. Fey, and Fish & Neave, New York City, for defendant McDonnell Aircraft Corp.

WATKINS, Senior District Judge.

Technograph Printed Circuits, Ltd., the owner of, and Technograph Printed Electronics, Inc., exclusive licensee under, Eisler United States Patent No. 2,706,697 ('697)¹ (hereinafter plaintiffs) have filed suits against Martin-Marietta Corporation, Westinghouse Electric Corporation, International Telephone and Telegraph Corporation and McDonnell Aircraft Corporation (hereinafter defendants) for alleged infringement of method Claims 4 and 10-14 inclusive of '697. Each of the defendants, having "opted out" of class litigation in the District Court for the Northern District of Illinois, has filed a Motion to Dismiss, the grounds being that the decisions in Technograph Printed Circuits, Ltd. v. Bendix Aviation Corporation, 218 F.Supp. 1 (D.Md.1963), affirmed 327 F.2d 497 (4 Cir. 1964), cert. den. 379 U.S. 826, 85 S.Ct. 53, 13 L.Ed.2d 36 (1964) (hereinafter Bendix) constituted collateral estoppel against the prosecution of these suits. Plaintiffs, of course, contend that under Triplett v. Lowell, 297 U.S. 638, 56 S.Ct. 645, 80 L. Ed. 949, there was, and could be, no estoppel where the parties in the prior and subsequent suits were not identical. The question of the viability and scope of Triplett was elaborately briefed, and discussed in conferences, and memoranda, and was the subject of at least one order. Before an opinion was filed by this Court, the United States Supreme Court granted certiorari in Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, and on May 3, 1971 filed its opinion therein. 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788. That decision² held that a plea of estoppel was not automatically to be accepted, but that "the court in the second litigation must decide in a principled way whether or not it is just and equitable to allow the plea of estoppel in the case before it." (402 U.S. at 334, 91 S.Ct. at 1445). The criteria established by the Supreme Court are so critical that direct quotations, rather than paraphrase, is indicated. The Supreme Court said (402 U.S. pages 332-334, 91 S.Ct. page 1444, footnotes omitted):

"Even conceding the extreme intricacy of some patent cases, we should keep firmly in mind that we are considering the situation where the patentee was plaintiff in the prior suit and chose to litigate at that time and place. Presumably he was prepared to litigate and to litigate to the finish against the defendant there involved. Patent litigation characteristically proceeds with some deliberation and, with the avenues for discovery available under the present rules of procedure, there is no reason to suppose that plaintiff patentees would face either surprise or unusual difficulties in getting all relevant and probative evidence before the court in the first litigation.

"Moreover, we do not suggest, without legislative guidance, that a plea of estoppel by an infringement or royalty suit defendant must automatically be accepted once the defendant in support of his plea identifies the issue in suit as the identical question finally decided against the patentee or one of his privies in previous litigation.

Rather, the patentee-plaintiff must be permitted to demonstrate, if he can, that he did not have `a fair opportunity procedurally, substantively and evidentially to pursue his claim the first time.' Eisel v. Columbia Packing Co., 181 F.Supp. 298, 301 (Mass.1960). This element in the estoppel decision will comprehend, we believe, the important concerns about the complexity of patent litigation and the posited hazard that the prior proceedings were seriously defective.

"Determining whether a patentee has had a full and fair chance to litigate the validity of his patent in an earlier case is of necessity not a simple matter. In addition to the considerations of choice of forum and incentive to litigate mentioned above, certain other factors immediately emerge. For example, if the issue is nonobviousness, appropriate inquiries would be whether the first validity determination purported to employ the standards announced in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 supra; whether the opinions filed by the District Court and the reviewing court, if any, indicate that the prior case was one of those relatively rare instances where the courts wholly failed to grasp the technical subject matter and issues in suit; and whether without fault of his own the patentee was deprived of crucial evidence or witnesses in the first litigation. But as so often is the case, no one set of facts, no one collection of words or phrases, will provide an automatic formula for proper rulings on estoppel pleas. In the end, decision will necessarily rest on the trial courts' sense of justice and equity.

"We are not persuaded, therefore, that the Triplett rule, as it was formulated, is essential to effectuate the purposes of the patent system or is an indispensable or even an effective safeguard against faulty trials and judgments. Whatever legitimate concern there may be about the intricacies of some patent suits, it is insufficient in and of itself to justify patentees relitigating validity issues as long as new defendants are available. This is especially true if the court in the second litigation must decide in a principled way whether or not it is just and equitable to allow the plea of estoppel in the case before it."

This Court has carefully considered the briefs and arguments in these cases, consolidated for the purpose of the motions to dismiss, has reviewed its previous decision and the authorities therein relied upon; has studied the briefs before the Fourth Circuit on the original argument and on motion for reargument en banc and on petition for certiorari to the Supreme Court of the United States; the decision of Commissioner Davis of the Court of Claims in Technograph Printed Circuits, Ltd., et al. v. United States, 164 U.S.P.Q. 584 (1970) and his Findings of Fact and Conclusions of Law; and the House of Lords decision in Mills & Rockley (Electronics) Limited v. Technograph Printed Circuits Limited, February 24, 1971. The Court has also considered what is tendered in plaintiffs' briefs and exhibits as new evidence.³

It is conceded that the issue in suit is the identical question finally decided against the plaintiffs in Bendix, who are the plaintiffs here.

It is the Court's firm opinion that:

(A) Plaintiffs in Bendix had "a fair opportunity procedurally, substantively and evidentially to pursue" their "claim the first time";

(B) the standards with respect to obviousness announced in Graham v. John Deere, 383 U.S. 1, 10, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966) were met;

(C) The opinions in the Bendix case do not indicate that it was one of those "rare instances where the courts wholly failed to grasp the technical subject matter and issues in suit";

(D) the plaintiffs were not deprived "without fault" of their own "of crucial evidence or witnesses" in the Bendix case;⁴ and

(E) "it is just and equitable to allow the plea of estoppel" in these cases.⁵

Since these conclusions require the dismissal of the four cases, and since an appeal is almost inevitable, a statement of reasons for the above conclusions is justified, if not required.

(A) Plaintiffs had a fair opportunity procedurally, substantively and evidentially to pursue their "claims the first time"; and (D) were not deprived "without fault" of their own "of crucial evidence or witnesses" in the Bendix case.

(A) The "fair opportunity" that plaintiffs had in the Bendix case involved numerous pretrial conferences and hearings on preliminary motions all elaborately briefed, and usually fully argued. In addition to twenty-nine court days of trial, four days of travel were spent, at the request of counsel, visiting plants of licensees and of Bendix. Plaintiffs filed 458 exhibits and defendant 543 exhibits. These included depositions (including that of Eisler); file wrappers of patents in the hundreds of pages; and pamphlets, printed publications, patents and correspondence, amounting to thousands of pages. After the last day of trial, counsel were permitted to file briefs, totalling in excess of 600 pages, followed by two days of arguments. Submission of new cases, references to modification of plaintiffs' licensing procedures, and new British patent action, thereafter extended over a period of months.

Highly experienced and efficient counsel certainly by the most exacting standard had a "fair opportunity" to develop fully their theories and positions. The court was lenient in its rulings on admissibility; and no claim was or is now made that the court...