Automatic Radio Mfg Co v. Hazeltine Research, No. 455

CourtUnited States Supreme Court
Writing for the CourtMINTON
Citation339 U.S. 827,94 L.Ed. 1312,70 S.Ct. 894
PartiesAUTOMATIC RADIO MFG. CO., Inc., v. HAZELTINE RESEARCH, Inc
Decision Date05 June 1950
Docket NumberNo. 455

339 U.S. 827
70 S.Ct. 894
94 L.Ed. 1312
AUTOMATIC RADIO MFG. CO., Inc.,

v.

HAZELTINE RESEARCH, Inc.

No. 455.
Argued April 5, 1950.
Decided June 5, 1950.
Rehearing Denied Oct. 9, 1950.

See 71 S.Ct. 13.

Page 828

Mr. Floyd H. Crews, New York City, for petitioner.

Messrs. Laurence B. Dodds, New York City, Philip F. LaFollette, Madison, Wis., for respondent.

[Argument of Counsel from page 828 intentionally omitted]

Page 829

Mr. Justice MINTON delivered the opinion of the Court.

This is a suit by respondent Hazeltine Research, Inc., as assignee of the licensor's interest in a nonexclusive patent license agreement covering a group of 570 patents and 200 applications, against petitioner Automatic Radio Manufacturing Company, Inc., the licensee, to recover royalties. The patents and applications are related to the manufacture of radio broadcasting apparatus. Respondent and its corporate affiliate and predecessor have for some twenty years been engaged in research, development, engineering design and testing and consulting services in the radio field. Respondent derives income from the licensing of its patents, its policy being to license any and all responsible manufacturers of radio apparatus at a royalty rate which for many years has been approximately one percent. Petitioner manufactures radio apparatus, particularly radio broadcasting receivers.

The license agreement in issue, which appears to be a standard Hazeltine license, was entered into by the parties in September 1942, for a term of ten years. By its terms petitioner acquired permission to use, in the manufacture of its 'home' products, any or all of the patents which respondent held or to which it might acquire rights. Petitioner was not, however, obligated to use respondent's patents in the manufacture of its products. For this license, petitioner agreed to pay respondent's assignor royalties based upon a small percentage of petitioner's selling price of complete radio broadcasting receivers, and in any event a minimum of $10,000 per year. It further agreed to keep a record of its sales and to make monthly reports thereof.

This suit was brought to recover the minimum royalty due for the year ending August 31, 1946, for an accounting of other sums due, and for other relief. Petitioner answered and both parties filed motions for summary

Page 830

judgment and affidavits in support of the motions. The District Court found the case to be one appropriate for summary procedure under Rule 56 of the Federal Rules of Civil Procedure, 28 U.S.C.A., and sustained the motion of respondent for judgment. The validity of the license agreement was upheld against various charges of misuse of the patents, and judgment was entered for the recovery of royalties and an accounting, and for a permanent injunction restraining petitioner from failing to pay royalties, to keep records, and to render reports during the life of the agreement. D.C., 77 F.Supp. 493. The Court of Appeals affirmed, one judge dissenting, 1 Cir., 176 F.2d 799 (and we granted certiorari, 338 U.S. 942, 70 S.Ct. 428, in order to consider important questions concerning patent misuse and estoppel to challenge the validity of licensed patents.

The questions for determination are whether an misuse of patents has been shown, and whether petitioner may contest the validity of the licensed patents, in order to avoid its obligation to pay royalties under the agreement.

First. It is insisted that the license agreement cannot be enforced because it is a misuse of patents to require the licensee to pay royalties based on its sales, even though none of the patents are used. Petitioner directs our attention to the 'Tie-in' cases. These cases have condemned schemes requiring the purchase of unpatented goods for use with patented apparatus or processes, 1 pro-

Page 831

hibiting production or sale of competing goods,2 and conditioning the granting of a license under one patent upon the acceptance of another and different license.3 Petitioner apparently concedes that these cases do not, on their facts, control the instant situation. It is obvious that they do not. There is present here no requirement for the purchase of any goods. Hazeltine does not even manufacture or sell goods; it is engaged solely in research activities. Nor is there any prohibition as to the licensee's manufacture or sale of any type of apparatus. The fact that the license agreement covers only 'home' apparatus does not mean that the licensee is prohibited from manufacturing or selling other apparatus. And finally, there is no conditioning of the license grant upon the acceptance of another and different license. We are aware that petitioner asserted in its countermotion for summary judgment in the District Court that Hazeltine refused to grant a license under any one or more of its patents to anyone who refused to take a license under all. This averment was elaborated in the affidavit of petitioner's attorney in support of the motion. The point was not pressed in the Court of Appeals or here. In any event there is nothing available in the record to support the averment, since the affidavit in support thereof was made upon information and belief and the relevant portion, at least, does not comply with Rule 56(e) of the Federal Rules of Civil Procedure.4

Page 832

But petitioner urges that this case 'is identical in principle' with the 'Tie-in' cases. It is contended that the licensing provision requiring royalty payments of a percentage of the sales of the licensee's products constitutes a misuse of patents because it ties in a payment on unpatented goods. Particular reliance is placed on language from United States v. U.S. Gypsum, 333 U.S. 364, 389, 400, 68 S.Ct. 525, 539, 544, 92 L.Ed. 746.5 That case was a prosecution under the Sherman Act, 15 U.S.C.A. § 1 et seq., for an alleged conspiracy of Gypsum and its licensees to extend the monopoly of certain patents and to eliminate competition by fixing prices on patented and unpatented gypsum board. The license provisions based royalties on all sales of gypsum board, both patented and unpatented. It was held that the license provisions, together with evidence of an understanding that only patented board would be sold, showed a conspiracy to restrict the production of unpatented products which was an invalid extension of the area of the patent monopoly. 333 U.S. at page 397, 68 S.Ct. at page 543. There is no indication here of conspiracy to restrict production of unpatented or any goods to effectuate a monopoly, and thus the Gypsum case does not aid petitioner. That which is condemned as against public policy by the 'Tie-in' cases is the extension of the monopoly of the patent to create another monopoly or restraint of competition—a restraint not countenanced by the patent grant. See, e.g., Mercoid Corp. v. Mid-Continent Investment Co., 320 U.S. 661, 665—666, 64 S.Ct. 268, 271, 88 L.Ed. 376; Morton Salt Co. v. Suppiger Co., 314 U.S. 488, 778, 62 S.Ct. 402, 86 L.Ed. 363; Ethyl Gasoline Corp. v. United States, 309 U.S. 436, 456, 60 S.Ct. 618, 625, 84 L.Ed. 852. The principle of those cases cannot be contorted to circumscribe the

Page 833

instant situation. This royalty provision does not create another monopoly; it creates no restraint of competition beyond the legitimate grant of the patent. The right to a patent includes the right to market the use of the patent at a reasonable return. See 46 Stat. 376, 35 U.S.C. § 40, 35 U.S.C.A. § 40; Hartford-Empire Co. v. United States, 323 U.S. 386, 417, 65 S.Ct. 373, 388, 89 L.Ed. 322; Id., 324 U.S. 570, 574, 65 S.Ct. 815, 818, 89 L.Ed. 1198.

The licensing agreement in issue was characterized by the District Court as essentially a grant by Hazeltine to petitioner of a privilege to use any patent or future development of Hazeltine in consideration of the payment of royalties. Payment for the privilege is required regardless of use of the patents.6 The royalty provision of the licensing agreement was sustained by the District Court and the Court of Appeals on the theory that it was a convenient mode of operation designed by the parties to avoid the necessity of determining whether each type of petitioner's product embodies any of the numerous Hazeltine patents. D.C., 77 F.Supp. at 496. The Court of Appeals reasoned that since it would not be unlawful to agree to pay a fixed sum for the privilege to use patents, it was not unlawful to provide a variable consideration measured by a percentage of the licensee's sales for the same privilege. 1 Cir., 176 F.2d at page 804. Numerous District Courts which have had occasion to pass on the question have reached the same result on similar grounds,7 and we are of like opinion.

Page 834

The mere accumulation of patents, no matter how many, is not in and of itself illegal. See Transparent-Wrap Machine Corp. v. Stokes & Smith Co., 329 U.S. 637, 67 S.Ct. 610, 91 L.Ed. 563. And this record simply does not support incendiary, yet vague, charges that respondent uses its accumulation of patents 'for the exaction of tribute' and collects royalties 'by means of the overpowering threat of disastrous litigation.' We cannot say that payment of royalties according to an agreed percentage of the licensee's sales is unreasonable. Sound business judgment could indicate that such payment represents the most convenient method of fixing the business value of the privileges granted by the licensing agreement. We are not unmindful that convenience cannot justify an extension of the monopoly of the patent. See, e.g., Mercoid Corp. v. Mid-Continent Investment Co., 320 U.S. 661, 666, 64 S.Ct. 268, 271, 88 L.Ed. 376; B.B. Chemical Co. v. Ellis, 314 U.S. 495, 498, 62 S.Ct. 406, 408, 86 L.Ed. 367. But as we have already indicated, there is in this royalty provision no inherent extension of the monopoly of the patent. Petitioner cannot complain because it must pay royalties whether it uses Hazeltine...

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304 practice notes
  • Apcc Services, Inc. v. Sprint Communications Co., No. 04-7034.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (District of Columbia)
    • June 28, 2005
    ...suit was assignee of parent corporation's right to grant licenses under certain patents), aff'd, 176 F.2d 799 (1st Cir.1949), aff'd, 339 U.S. 827, 70 S.Ct. 894, 94 L.Ed. 1312 (1950); Manhattan Trust Co. v. Sioux City & N.R. Co., 65 F. 559, 568 (N.D.Iowa 1895) (intervenor assignee in suit at......
  • Kaiser Trading Co. v. Associated Metals & Minerals Corp., No. C-70 2253.
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Northern District of California
    • December 14, 1970
    ...to the contract in suit. In Automatic Radio Mfg. Co. v. Hazeltine Research, Inc., 176 F.2d 799 (1st Cir. 1949), aff'd on other grounds, 339 U.S. 827, 70 S.Ct. 894, 94 L.Ed. 1312 (1950),9 in which a suit was brought to recover royalties due under a patent licensing agreement and a defense wa......
  • Blohm & Voss AG v. Prudential-Grace Lines, Inc., Civ. A. No. 17959.
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Maryland)
    • June 20, 1972
    ...'390 alone. It is also at least arguable that the MacGregor arrangement is valid under Automatic Radio Manufacturing Co. v. Hazeltine, 339 U.S. 827, 833-834, 70 S.Ct. 894, 94 L.Ed. 1312 (1950). There the Court held that a provision that in return for a license by Hazeltine to use any patent......
  • Ohio-Sealy Mattress Mfg. Co. v. Kaplan, No. 76 C 0810.
    • United States
    • United States District Courts. 7th Circuit. United States District Court (Northern District of Illinois)
    • July 20, 1982
    ...that do not use the patent. The Court expressly reaffirmed the rule of Automatic Radio Manufacturing Company v. Hazeltine Research, Inc., 339 U.S. 827, 70 S.Ct. 894, 94 L.Ed. 1312 (1950), that a patent owner could negotiate for royalties on total sales, whether or not all sales used the pat......
  • Request a trial to view additional results
301 cases
  • Apcc Services, Inc. v. Sprint Communications Co., No. 04-7034.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (District of Columbia)
    • June 28, 2005
    ...suit was assignee of parent corporation's right to grant licenses under certain patents), aff'd, 176 F.2d 799 (1st Cir.1949), aff'd, 339 U.S. 827, 70 S.Ct. 894, 94 L.Ed. 1312 (1950); Manhattan Trust Co. v. Sioux City & N.R. Co., 65 F. 559, 568 (N.D.Iowa 1895) (intervenor assignee in suit at......
  • Kaiser Trading Co. v. Associated Metals & Minerals Corp., No. C-70 2253.
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Northern District of California
    • December 14, 1970
    ...to the contract in suit. In Automatic Radio Mfg. Co. v. Hazeltine Research, Inc., 176 F.2d 799 (1st Cir. 1949), aff'd on other grounds, 339 U.S. 827, 70 S.Ct. 894, 94 L.Ed. 1312 (1950),9 in which a suit was brought to recover royalties due under a patent licensing agreement and a defense wa......
  • Blohm & Voss AG v. Prudential-Grace Lines, Inc., Civ. A. No. 17959.
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Maryland)
    • June 20, 1972
    ...'390 alone. It is also at least arguable that the MacGregor arrangement is valid under Automatic Radio Manufacturing Co. v. Hazeltine, 339 U.S. 827, 833-834, 70 S.Ct. 894, 94 L.Ed. 1312 (1950). There the Court held that a provision that in return for a license by Hazeltine to use any patent......
  • Ohio-Sealy Mattress Mfg. Co. v. Kaplan, No. 76 C 0810.
    • United States
    • United States District Courts. 7th Circuit. United States District Court (Northern District of Illinois)
    • July 20, 1982
    ...that do not use the patent. The Court expressly reaffirmed the rule of Automatic Radio Manufacturing Company v. Hazeltine Research, Inc., 339 U.S. 827, 70 S.Ct. 894, 94 L.Ed. 1312 (1950), that a patent owner could negotiate for royalties on total sales, whether or not all sales used the pat......
  • Request a trial to view additional results
1 books & journal articles
  • United States Law and the Proposed Code of Conduct on the Transfer of Technology
    • United States
    • Antitrust Bulletin Nbr. 23-4, December 1978
    • December 1, 1978
    ...parties rather than patent power dictates the total-salesroyalty provision." Id. at 138. See e.g., Automatic Radio Mfg.v. Hazeltine, Inc., 339 U.S. 827(1950)(total sales measure-ment of patent royalties upheld; record showed no coercion);United States v. United States Gypsum Co., 333 U.S. C......

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