474 F.2d 798 (4th Cir. 1973), 72-1597, Technograph Printed Circuits, Ltd. v. Martin-Marietta Corp.

Docket Nº:72-1597 to 72-1600.
Citation:474 F.2d 798, 177 U.S.P.Q. 97
Party Name:TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Inc., Plaintiffs-Appellants, v. MARTIN-MARIETTA CORPORATION, Defendant-Appellee. TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Inc., Plaintiffs-Appellants, v. WESTINGHOUSE ELECTRIC CORPORATION, Defendant-Appellee. TECHNOGRAPH PRINTED CIRCUITS, LTD.,
Case Date:February 20, 1973
Court:United States Courts of Appeals, Court of Appeals for the Fourth Circuit
 
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Page 798

474 F.2d 798 (4th Cir. 1973)

177 U.S.P.Q. 97

TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Inc., Plaintiffs-Appellants,

v.

MARTIN-MARIETTA CORPORATION, Defendant-Appellee.

TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Inc., Plaintiffs-Appellants,

v.

WESTINGHOUSE ELECTRIC CORPORATION, Defendant-Appellee.

TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Inc., Plaintiffs-Appellants,

v.

McDONNELL AIRCRAFT CORPORATION, Defendant-Appellee.

TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Inc., Plaintiffs-Appellants.

v.

INTERNATIONAL TELEPHONE AND TELEGRAPH CORPORATION, Defendant-Appellee.

Nos. 72-1597 to 72-1600.

United States Court of Appeals, Fourth Circuit.

February 20, 1973

Argued Nov. 1, 1972.

Page 799

Edward F. McKie, Jr., Washington, D. C. (Benjamin C. Howard and Miles & Stockbridge, Baltimore, Md., on brief), for defendant-appellee, Martin-Marietta Corp.

William E. Schuyler, Jr., Schuyler, Birch, Swindler, McKie & Beckett, Washington, D. C., on brief, for defendant-appellee, Westinghouse Electric Corp.

Jervis Spencer Finney, Ober, Grimes & Shriver, Baltimore, Md., Charles H. Walker, Albert E. Fey and Fish & Neave, New York City, on brief, for defendant-appellee, McDonnell Aircraft Corp.

Dana M. Raymond, Brumbaugh, Graves, Donohue & Raymond, New York City, Norwood B. Orrick and Venable, Baetjer & Howard, Baltimore, Md., on brief, for defendant-appellee, International Telephone and Telegraph Corp.

Before BUTZNER, FIELD and WIDENER, Circuit Judges.

WIDENER, Circuit Judge.

These cases arose when the plaintiffs (appellants) filed patent infringement suits against the defendants (appellees) in the United States District Court for the District of Maryland. The plaintiffs are, respectively, the owner and exclusive licensee under Eisler's United States Patent No. 2,706,697 ('697). 1

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The complaints allege that the defendants infringed Claims 4 and 10-14 inclusive of '697. The defendants pleaded collateral estoppel, claiming that the same issues before the court had been adversely decided against the plaintiffs in Technograph Printed Circuits, Ltd. v. Bendix Aviation Corporation, 218 F.Supp. 1 (D.Md.1963), aff'd. 327 F.2d 497 (4th Cir. 1964), cert. den. 379 U.S. 826, 85 S.Ct. 53, 13 L.Ed.2d 36 (1964) (hereinafter Bendix). The district court sustained the defendants' pleas of estoppel and dismissed the cases. 2 We affirm on the authority of Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971).

In Blonder-Tongue, the Supreme Court granted certiorari following a conflict between the Seventh and Eighth Circuits as to the validity of the patent there in question. The Eighth Circuit had previously held the patent invalid in a suit by the Foundation as plaintiff against another defendant. The Seventh Circuit, in a suit by the Foundation as plaintiff, found the patent to be valid and infringed by Blonder-Tongue Laboratories. The court did not determine the issue of validity but overruled Triplett v. Lowell, 297 U.S. 638, 56 S.Ct. 645, 80 L.Ed. 949 (1936), insofar as it foreclosed a plea of estoppel by judgment by a defendant facing a charge of infringement of a patent brought by a plaintiff which had previously, as a plaintiff, had the patent declared invalid in litigation concerning the validity of the patent. 3 The court abolished the doctrine of mutuality of estoppel in such patent cases. It held that a plea of estoppel by judgment could be affirmatively asserted by a defendant where the issue decided in the prior adjudication was identical with the one presented in the present action, where there was a final judgment on the merits in the prior case, and where the party-plaintiff against whom the plea was asserted was a party-plaintiff, or was in privity with such party-plaintiff, who received the adverse decision in the prior adjudication. The following excerpt from the opinion is the best expression of the court's reasoning and explains the standards to be followed in determining whether or not such a plea of estoppel should be sustained:

"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 a 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 the 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

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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 (D.C.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., supra [383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545]; 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." (Footnotes omitted.)

402 U.S. at 332, 91 S.Ct. at 1444.

The first issue here is whether the parties-plaintiff in the present cases are the same parties-plaintiff as in Bendix. In Bendix, the plaintiffs were Technograph Printed Circuits, Ltd., and Technograph Printed Electronics, Inc. The plaintiffs in the present cases are Technograph Printed Circuits, Ltd., and Technograph Printed Electronics, Inc. Thus, the parties-plaintiff are the same in both instances and the requirement of Blonder-Tongue that the parties-plaintiff be identical or in privity has been met.

We turn to the next requirement of Blonder-Tongue: that the issues in both proceedings be identical. In Bendix, the district court held that claims 4, 5, 10, 14, 15, and 16 of '697 and certain claims of '165 and '960 were invalid for obviousness and anticipation. 218 F.Supp. 1, 31, 58. In the present appeal, no issue is raised concerning '165 or '960. Plaintiffs claim only that claims 4 and 10-14 inclusive of '697 were infringed by the defendants. Although it appears that the validity of claims 11, 12, and 13 of '697 were not specifically mentioned as being invalid in Bendix, an examination of those claims shows that they were dependent on claim 10, 4 which was

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held invalid in Bendix. Also, the trial court's opinion states that the parties here conceded that the issues in suit were identical to the issues decided against plaintiffs in Bendix (340 F.Supp. 423, 425), and this is not contested on appeal. Accordingly, the requirement of Blonder-Tongue that the issues be identical in both proceedings has been complied with.

The next step in determining whether Blonder-Tongue should apply is to ascertain whether plaintiffs were given a full and fair opportunity, procedurally, substantively, and evidentially, to litigate the validity of '697 in Bendix. We conclude that they were.

The Bendix trial took twenty-nine court days, during which the plaintiffs filed 458 exhibits and the defendants 543 exhibits. Several additional days were spent by the court in visiting the plants of Bendix and of licensees of the plaintiffs. Following the last day of trial, the parties filed additional briefs, over 600 pages, followed by two days of argument. No claim was made then, nor is any made now, that...

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