University of Illinois Found. v. Blonder-Tongue Lab., Inc.

• Decision Date: 02 April 1970
• Docket Number: No. 17153.,17153.
• Citation: 422 F.2d 769
• Parties: UNIVERSITY OF ILLINOIS FOUNDATION, Plaintiff and Counter Defendant-Appellee, v. BLONDER-TONGUE LABORATORIES, INC., Defendant and Counter Claimant-Appellant, v. JFD ELECTRONICS CORPORATION, Counterclaim-Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

422 F.2d 769 (1970)

UNIVERSITY OF ILLINOIS FOUNDATION, Plaintiff and Counter Defendant-Appellee, v. BLONDER-TONGUE LABORATORIES, INC., Defendant and Counter Claimant-Appellant, v. JFD ELECTRONICS CORPORATION, Counterclaim-Defendant-Appellee.

No. 17153.

United States Court of Appeals, Seventh Circuit.

February 13, 1970.

As Modified on Denial of Rehearing April 2, 1970.

Robert H. Rines, Boston, Mass., John Rex Allen, Richard S. Phillips, William R. McNair, Chicago, Ill., for appellant, Rines & Rines, Boston, Mass., Hofgren, Wegner, Allen, Stellman & McCord, Chicago, Ill., of counsel.

William A. Marshall, Charles J. Merriam, Basil P. Mann, Chicago, Ill., for plaintiff and counterclaim defendant-appellee, Merriam, Marshall, Shapiro & Klose, Chicago, Ill., of counsel.

Jerome M. Berliner, New York City, Myron C. Cass, Chicago, Ill., Robert C. Faber, New York City, for appellee, JFD Electronics Corp., Ostrolenk, Faber, Gerb & Soffen, New York City, Silverman & Cass, Chicago, Ill., of counsel.

Before CASTLE, Chief Judge, DUFFY, Senior Circuit Judge, and FAIRCHILD, Circuit Judge.

FAIRCHILD, Circuit Judge.

The University of Illinois Foundation brought action against Blonder-Tongue Laboratories, Inc. for infringement of two patents in the field of radio and television antennas. Blonder-Tongue asserted invalidity of the two patents. JFD Electronics Corporation, licensed under the patents, was made a party, and Blonder-Tongue counterclaimed against JFD (principally) and the Foundation, for unfair competition, violation of antitrust laws, and infringement of a Blonder-Tongue patent.

The district court decided the Foundation's patents were valid and infringed, dismissed the unfair competition and antitrust charges, and found claim 5 of the Blonder-Tongue patent obvious and invalid. Blonder-Tongue has appealed.

Blonder-Tongue argues here, in addition to the merits issues presented to the district court, that it was not given a fair trial.

1. Alleged deprivation of a fair trial.

In October, 1967, after a number of postponements for the convenience of one or the other of the parties or the court, trial was set for December 18. Blonder-Tongue asserts that it was ready for trial on that day. The court, however, was unable to reach the matter and held it on call until December 20, then until December 26, then until the 27th, and then until the 28th. Trial began December 28 and lasted to January 16.

During the delay, Blonder-Tongue moved for postponement until at least February 13, showing that Mr. Blonder, its principal officer, and Professor Chu, its expert, could have appeared at a trial beginning December 18, but had conflicting and compelling other commitments in late December and January.¹

The court denied the motions. The trial scheduled for December 18, but actually begun December 28, lasted more than two weeks. Mr. Blonder did testify. Professor Chu (who had gone to Taiwan in late December) did not, but counsel has not shown the substance of testimony expected from him and not otherwise available. We find no abuse of discretion in proceeding with the trial.

2. The patents involved.

The Foundation is assignee of a patent, No. 3,210,767, issued October 5, 1965 to D. E. Isbell on an application filed May 3, 1960: Frequency Independent Unidirectional Antennas. This patent is reproduced in University of Illinois Foundation v. Winegard Company (S.D. Iowa, 1967), 271 F.Supp. 412, 420-424.

The Foundation is also assignee of a patent, No. Re 25,740, issued March 9, 1965 to P. E. Mayes, et al.: Log Periodic Backward Wave Antenna Array. This patent is a reissue of No. 3,108,280, applied for September 30, 1960.

Blonder-Tongue is assignee of a patent, No. 3,259,904, issued July 5, 1966 to I. P. Blonder et al. on an application filed November 21, 1963: Antenna Having Combined Support and Lead-In.

3. Alleged Invalidity of Isbell on account of anticipation by publication.

Isbell was associated with the Antenna Laboratory of the University of Illinois in performance of an Air Force contract. Reports were prepared and distributed from time to time pursuant to the contract. Quarterly Engineering Report No. 2 contained a description of Isbell's investigation of a type of logperiodic antenna, and it is conceded that if this report was published more than one year before May 3, 1960, the patent was invalid under 35 U.S.C. § 102(b). The printer delivered copies of the report to the office of Miss Johnson, technical editor of the Electrical Engineering Research Laboratory, April 30, 1959. Copies were mailed out of Miss Johnson's office, pursuant to the Air Force contract, to persons on the distribution list May 5.

Blonder-Tongue contends that this report was accessible to the public on and after April 30, 1959 and therefore a printed publication more than one year before May 3, 1960.

It appears that the Engineering Research Laboratory had a "library" or reading room near Miss Johnson's office. It was unattended, and she had the keys to the cabinets in which materials were kept. It is unlikely that a copy of the report in question reached the "library" before May 3. Miss Johnson testified that a report would normally not be processed and made available as a library copy for a week or two after delivery by the printer.

The testimony as to public availability of copies on hand in her office before mail distribution was equivocal. Miss Johnson testified that if counsel had come to her office on April 30 and requested a copy of the report, he would "very likely" have been given one. She believed the copies were "available as a library reference" on the date received in her office.

Miss Johnson's immediate superior testified, however, that it was the policy to distribute quarterly reports to the list supplied by the Air Force before making them available to others.

The finding that the circumstances of the possession of the reports from April 30 to May 5 did not represent publication is not clearly erroneous.

4. Alleged Obviousness of Isbell.

We are met at the outset with the fact that the district court for the southern district of Iowa has decided that Isbell is invalid for obviousness.² That decision was affirmed by the eighth circuit³ (although one of the district court's findings was deemed erroneous) and certiorari has been denied.⁴ It would seem sound judicial policy that the adjudication of that issue against the Foundation in one action where it was a party would provide a defense in any other action by the Foundation for infringement of the same patent.⁵

That, however, is not the law in this field. "While the earlier decision may by comity be given great weight in a later litigation and thus persuade the court to render a like decree, it is not res adjudicata and may not be pleaded as a defense."⁶

We approach the carefully stated decisions of the district court and court of appeals in the Winegard action with great respect, but our own analysis, on the basis of the record and the findings of fact made by the district court in this action, and after considering the legal conclusions of the district court, leads us to a different result.

We quote here from the opinion of the district court in this action his description of the problem dealt with and the Isbell solution:

"The plaintiff's patents in suit relate to antennas having unidirectional radiaton patterns essentially independent of frequency over a wide band of frequencies. The antennas covered by the patents are equally suitable for both the reception and the transmission of radiated electromagnetic energy (which includes radio and television frequency signals), but our primary concern is with their use for television reception. The characteristics desired in an antenna used for the reception of television signals are a function of the nature of frequency transmission. Although the frequency of a transmitted wave remains essentially constant as the wave moves through space, the strength of the signal decreases with increasing distance. An antenna is used to isolate the desired signal from interfering signals which exist at the point of reception and to make this signal available to the television receiver, via a transmission line, in as large a magnitude as possible.

The characteristics of an antenna which measure its performance are its gain, its bandwidth, its directivity, and its impedance. `Gain' is the measure of its ability to increase the strength of an incoming signal relative to a fixed standard; high gain is a desired characteristic. `Bandwidth' is its capacity to receive, without adjustment, signals of different frequencies with essentially constant gain. An antenna whose reception is essentially independent of frequency over a wide band of frequencies is known as a `wide-band' or `frequency independent' antenna. `Directivity' is an antenna's ability to receive signals from one desired direction as compared to all other directions. Television antennas are preferably unidirectional in order to eliminate interference with the desired signal and the `ghost' images such interference produces. `Impedance' is a measure of an antenna's ability to transfer energy to the transmission line. An antenna's impedance should match as closely as possible the impedance of the transmission line to prevent the formation of `ghosts.' In the design of antennas, one desired characteristic is often obtained at the expense of another. The antenna designer's goal, of course, is to achieve the best possible balance of the several different characteristics.

The simplest antenna which has been put to practical use for television reception is the dipole antenna, which consists of a pair of linear components extending from each side of a transmission line fed in the center at the inner ends of the linear components. Shortly after 1954, the log-periodic principle of antenna design was developed. The structures designed in accordance with this principle have cyclic...