Bourns, Inc. v. United States

• Decision Date: 09 July 1976
• Docket Number: No. 383-73.,383-73.
• Citation: 537 F.2d 486
• Parties: BOURNS, INC. and Marlan E. Bourns, v. The UNITED STATES, Allen-Bradley Company et al., Intervenors.
• Court: U.S. Claims Court

537 F.2d 486

BOURNS, INC. and Marlan E. Bourns, v. The UNITED STATES, Allen-Bradley Company et al., Intervenors.

No. 383-73.

United States Court of Claims.

July 9, 1976.

COPYRIGHT MATERIAL OMITTED

Clyde F. Willian, Chicago, Ill., attorney of record, for plaintiffs. Robert L. Harmon, David A. Anderson and Hume, Clement, Brinks, Willian, Olds & Cook, Ltd., Chicago, Ill., of counsel.

Vito J. DiPietro, Washington, D.C., with whom was Asst. Atty. Gen. Rex E. Lee, Washington, D.C., for defendant.

Lewis T. Steadman, Chicago, Ill., for the intervenors. Robert W. Berry, Washington, D.C., attorney of record. Quarles & Brady, Milwaukee, Wis., of counsel.

Before COWEN, Chief Judge, DURFEE, Senior Judge, and SKELTON, Judge.

ON DEFENDANT'S MOTION FOR PARTIAL SUMMARY JUDGMENT AND DEFENDANT'S SUPPLEMENTAL MOTION FOR SUMMARY JUDGMENT

PER CURIAM:

This case comes before the court on plaintiffs' request, filed November 4, 1975, for review by the court of the recommended decision, filed August 1, 1975, by former Trial Judge Hal D. Cooper (since resigned to enter private practice of law), pursuant to Rules 54 and 55, on defendant's motion for partial summary judgment and defendant's supplemental motion for summary judgment. Also before the court is defendant's motion, filed December 10, 1975, to strike affidavits of Robert L. Harmon and Robert C. McColloch which comprise the Appendix to plaintiffs' brief to the court. The case has been submitted on the briefs and oral argument of counsel.

The affidavits comprising the Appendix to plaintiffs' brief amount to a supplementation of the record on review by the court which is generally not permitted and for which the rules of the court do not provide. Therefore, defendant's motion to strike the affidavits is granted.

Since the court agrees with the recommended decision of the trial judge, as hereinafter set forth, it hereby affirms and adopts the same as the basis for its judgment in this case. It is therefore concluded that plaintiffs are not entitled to recover and defendant's motions for summary judgment are granted and the petition is dismissed.

OPINION OF TRIAL JUDGE

COOPER, Trial Judge:

Relying on Blonder-Tongue, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971), defendant, in two separate motions for summary judgment, asks that collateral estoppel be applied to all of the claims of Bourns Patent No. 2,777,926 asserted in this case. With respect to claims 1, 2, 11, 14, 15, 16, and 20, defendant bases its plea of estoppel on the prior adjudication of invalidity of these claims in Bourns, Inc. v. Dale Electronics, Inc., 308 F.Supp. 501 (D.Nebr.1969). Claims 3, 4, 6, 7, 12, 19, 21, and 22 were not litigated in the prior suit, but defendant contends that they present the same issues under 35 U.S.C. § 103 as those decided adversely to plaintiffs in the Dale suit and that, therefore, the estoppel should extend to those claims as well.

For the reasons stated hereinafter, it is concluded that collateral estoppel does apply and that it forecloses any relief to plaintiffs in this case.

I

The Bourns patent¹ relates to a lead-screw actuated potentiometer (LSAP). A potentiometer is a device for varying the resistance in an electrical circuit. The patent discloses the objects of the invention as providing a potentiometer that (1) may be easily and accurately adjusted, (2) may be manufactured in miniature from high-quality materials, (3) is able to withstand acceleration, vibration, and extreme ranges of temperature, (4) is small in size, compact, and accurate, and (5) has novel means for mounting. The disclosed potentiometer consists of a base on which are supported an elongated resistance element, a conductor generally parallel to the resistance element, a screwshaft, and a slider with contacts. The slider is supported on the screw so that, upon rotation of the screw, the slider and its contacts move in linear fashion along the resistance element and the conductor to vary the resistance in the circuit in which the potentiometer is connected. A cap or cover supported on the base encloses the screw and slider and restrains the slider from rotation. The screw extends through one end of the base to present an external head for adjustment purposes. A pair of holes is provided in the base so that the potentiometer may be supported on parallel mounting posts that extend through the holes. A plurality of potentiometers may be assembled on the same pair of posts, each with its external screwhead similarly oriented for ease of adjustment.

The text of the patent indicates that the ease and accuracy of adjustment achieved with the disclosed potentiometer is the result of using a precision-machined rotatable screwshaft which may be adjusted by a screwdriver. The novel mount consists of the holes in the base. The patent specification does not otherwise indicate how the disclosed device achieves the claimed objectives. For example, although the patent states that several of the component parts may be made from a molded plastic material, there is nothing describing what it is in the arrangement or combination of those components that permits miniaturized manufacture of the device from high-quality materials, or how the device is able to withstand extreme ranges of temperature.²

II

With respect to the previously adjudicated claims, plaintiffs apparently concede that they did receive a full and fair opportunity to litigate the validity issues in the Dale case and that the trial court did understand the technical subject matter and issues. Their only defense to the collateral estoppel plea, as applied to those claims, is the argument that it should not be applied retroactively. In support of that argument, plaintiffs have submitted the affidavit of a corporate official in which it is stated that, in reliance on the prior rule in Triplett v. Lowell, 297 U.S. 638, 56 S.Ct. 645, 80 L.Ed. 949 (1936), the appeal in the Dale case was dismissed and suit was filed in another jurisdiction.³

That same argument was rejected in Bourns, Inc. v. Allen-Bradley Co., 348 F.Supp. 554 (N.D.Ill.1972), and by the Court of Appeals in affirming the District Court's application of the estoppel to the previously litigated claims, 480 F.2d 123 (7th Cir.1973), cert. denied, 414 U.S. 1094, 94 S.Ct. 726, 38 L.Ed.2d 551.⁴ The persuasive reasons stated in the opinions of those courts provide a full answer to plaintiffs' arguments and they need not be repeated here. Suffice to say, plaintiffs have cited no case in which a collateral estoppel plea has been denied retroactive application. On the other hand, a number of courts have given retroactive effect to the estoppel in the sense that the estoppel was applied on the basis of an invalidity decision rendered prior to the Blonder-Tongue decision. See, e.g., Technograph Printed Circuits, Ltd. v. United States, 202 Ct.Cl. 867, 484 F.2d 1383 (1973); Blumcraft of Pittsburgh v. Kawneer Co., 482 F.2d 542 (5th Cir.1973); University of Illinois Foundation v. Blonder-Tongue Laboratories, Inc., 465 F.2d 380 (7th Cir.1972), aff'g, 334 F.Supp. 47 (N.D.Ill.1971), cert. denied, 409 U.S. 1061, 93 S.Ct. 559, 34 L.Ed.2d 513 (1972); Monsanto Co. v. Dawson Chemical Co., 443 F.2d 1035 (5th Cir.1971), cert. denied, 405 U.S. 974, 92 S.Ct. 1191, 31 L.Ed.2d 248 (1972); Blumcraft of Pittsburgh v. Architectural Art Mfg., Inc., 337 F.Supp. 853 (D.Kan.1972), aff'd, 459 F.2d 482 (10th Cir.1972). It should be noted that in Monsanto and Blonder-Tongue the estoppel plea was allowed in cases where the trial court had already held the patent valid, but, by retroactive application of the estoppel, an earlier invalidity determination in another court was held to be controlling.

Nor can there be any doubt that prior district court decisions are a sufficient basis for applying the estoppel. Iron Ore Co. of Canada v. Dow Chemical Co., 177 USPQ 34 (D.Utah 1973), aff'd, 500 F.2d 189 (10th Cir.1973); Sherman v. Jacobson, 247 F.Supp. 261 (S.D.N.Y.1965). That was also the situation in Lucerne Products, Inc. v. Cutler-Hammer, Inc., 175 USPQ 485 (N.D.Ohio 1972), in which an appeal from the trial court's invalidity determination was voluntarily dismissed and collateral estoppel was later applied on the basis of the trial court's opinion.

Finally, with respect to plaintiffs' contention that they relied on the Triplett rule in dismissing their appeal in the Dale case, it is difficult to accept that contention for the same reasons the Seventh Circuit rejected it. The Triplett rule would have permitted further litigation irrespective of whether the appeal had been prosecuted so it is difficult to understand how that rule was decisive in the decision to dismiss the appeal. The clear inference to be drawn from plaintiffs' actions is that they abandoned the appeal because they did not believe it would be successful.

Where there is no genuine issue of any material fact, and applicable principles of law indicate that collateral estoppel should be applied, summary judgment is appropriate. Jones v. Zurich General Accident & Liability Ins. Co., 121 F.2d 761 (2d Cir.1941). There being no genuine issue as to any material fact, and it appearing that plaintiffs had a full and fair opportunity to litigate validity in the Dale suit, collateral estoppel applies and they should now be estopped to assert claims 1, 2, 11, 14, 15, 16, and 20.

III

As to the previously unadjudicated claims, defendant contends that the issues relevant to a determination of the nonobviousness of those claims are identical to the issues adjudicated in Dale and that collateral estoppel should apply to them as well.

In support of its contention, defendant has submitted a series of claim-comparison charts which compares each of the claims with adjudicated claim 11 and also compares claim 19 with adjudicated claim 20. With respect to the differences revealed by this comparison, defendant has submitted a number of...