Laboratories, Inc v. University of Illinois Foundation

• Decision Date: 03 May 1971
• Docket Number: BLONDER-TONGUE,No. 338,338
• Citation: 28 L.Ed.2d 788,91 S.Ct. 1434,402 U.S. 313,169 USPQ 513
• Parties: LABORATORIES, INC., Petitioner, v. UNIVERSITY OF ILLINOIS FOUNDATION et al
• Court: U.S. Supreme Court

402 U.S. 313

91 S.Ct. 1434

28 L.Ed.2d 788

BLONDER-TONGUE LABORATORIES, INC., Petitioner,

v UNIVERSITY OF ILLINOIS FOUNDATION et al.

No. 338.

Argued Jan. 14, 1971.

Decided May 3, 1971.

Syllabus

This Court's holding in Triplett v. Lowell, 297 U.S. 638, 56 S.Ct. 645, 80 L.Ed. 949, that a determination of patent invalidity is not res judicata against the patentee in subsequent litigation against a different defendant overruled to the extent that it forecloses an estoppel plea by one facing a charge of infringement of a patent that has once been declared invalid, and in this infringement suit where because of Triplett petitioner did not plead estoppel and the patentee had no opportunity to challenge the appropriateness of such a plea the parties should be allowed to amend their pleadings and introduce evidence on the estoppel issue. Pp. 317—350.

422 F.2d 769, vacated and remanded.

Robert H. Rines, Boston, Mass., for petitioner.

Richard W. McLaren, Chicago, Ill., for the United States, as amicus curiae, by special leave of Court.

William A. Marshall, Chicago, Ill., for respondent University of Illinois Foundation.

Sidney G. Faber, New York City, for respondent J F D Electronics Corporation.

Mr. Justice WHITE delivered the opinion of the Court.

Respondent University of Illinois Foundation (hereafter Foundation) is the owner by assignment of U.S. Patent No. 3,210,767, issued to Dwight E. Isbell on October 5, 1965. The patent is for 'Frequency Independent Unidirectional Antennas,' and Isbell first filed his application May 3, 1960. The antennas covered are designed for transmission and reception of electromagnetic radio frequency signals used in many types of communications, including the broadcasting of radio and television signals.

The patent has been much litigated since it was granted, primarily because it claims a high quality television antenna for color reception.¹ One of the first infringement suits brought by the Foundation was filed in the Southern District of Iowa against the Winegard Co., an antenna manufacturer.² Trial was to the court, and after pursuing the inquiry mandated by Graham v. John Deere Co., 383 U.S. 1, 17—18, 86 S.Ct. 684, 693—694, 15 L.Ed.2d 545 (1966), Chief Judge Stephenson held the patent invalid since 'it would have been obvious to one ordinarily skilled in the art and wishing to design a frequency independent unidirectional antenna to combine these three old elements, all suggested by the rpior art references previously discussed.' University of Illinois Foundation v. Winegard Co., 271 F.Supp. 412, 419 (SD Iowa 1967) (footnote omitted).³ Accordingly, he entered judgment for the alleged infringer and against the patentee. On appeal, the Court of Appeals for the Eighth Circuit unanimously affirmed Judge Stephenson. 402 F.2d 125 (1968). We denied the patentee's petition for certiorari. 394 U.S. 917, 89 S.Ct. 1191, 22 L.Ed.2d 452 (1969).

In March 1966, well before Judge Stephenson had ruled in the Winegard case, the Foundation also filed suit in the Northern District of Illinois charging a Chicago customer of petitioner, Blonder-Tongue Laboratories, Inc. (hereafter B-T), with infringing two patents it owned by assignment: the Isbell patent and U.S. Patent No. Re. 25,740, reissued March 9, 1965, to P. E. Mayes et al. The Mayes patent was entitled 'Log Periodic Backward Wave Antenna Array,' and was, as indicated, a reissue of No. 3,108,280, applied for on September 30, 1960. B-T chose to subject itself to the jurisdiction of the court to defend its customer, and it filed an answer and counterclaim against the Foundation and its licensee, respondent JFD Electronics Corp., charging: (1) that both the Isbell and Mayes patents were invalid; (2) that if those patents were valid, the B-T antennas did not infringe either of them; (3) that the Foundation and JFD were guilty of unfair competition; (4) that the Foundation and JFD had violated the 'anti-trust laws of the United States, including the Sherman and Clayton Acts, as amended'; and (5) that certain JFD antenna models infringed B-T's patent No. 3,259,904, 'Antenna Having Combined Support and Lead-In,' issued July 5, 1966.

Trial was again to the court, and on June 27, 1968, Judge Hoffman held that the Foundation's patents were valid and infringed, dismissed the unfair competition and antitrust charges, and found claim 5 of the B-T patent obvious and invalid. Before discussing the Isbell patent in detail, Judge Hoffman noted that it had been held invalid as obvious by Judge Stephenson in the Winegard litigation. He stated:

'This court is, of course, free to decide the case at bar on the basis of the evidence before it. Triplett v. Lowell, 297 U.S. 638, 642, (56 S.Ct. 645, 80 L.Ed. 949) (1936). Although a patent has been adjudged invalid in another patent infringement action against other defendants, patent owners cannot be deprived 'of the right to show, if they can, that, as against defendants who have not previously been in court, the patent is valid and infringed.' Aghnides v. Holden, 22 (6) F.2d 949, 951 (7th Cir. 1955). On the basis of the evidence before it, this court disagrees with the conclusion reached in the Winegard case and finds both the Isbell patent and the Mayes et al. patent valid and enforceable patents.' App. 73.

B-T appealed, and the Court of Appeals for the Seventh Circuit affirmed: (1) the findings that the Isbell patent was both valid and infringed by B-T's products; (2) the dismissal of B-T's unfair competition and antitrust counterclaims; and (3) the finding that claim 5 of the B-T patent was obvious. However, the Court of Appeals reversed the judgment insofar as Judge Hoffman had found the Mayes patent valid and enforceable, enjoined infringement thereof, and provided damages for such infringement. 422 F.2d 769 (1970).

B-T sought certiorari, assigning the conflict between the Courts of Appeals for the Seventh and Eighth Circuits as to the validity of the Isbell patent as a primary reason for granting the writ.⁴ We granted certiorari, 400 U.S. 864, 91 S.Ct. 101, 27 L.Ed.2d 103 (1970), and subsequently requested the parties to discuss the following additional issues not raised in the petition for review:

'1. Should the holding of Triplett v. Lowell, 297 U.S. 638, (56 S.Ct. 645, 80 L.Ed. 949), that a determination of patent invalidity is not res judicata as against the patentee in subsequent litigation against a different defendant, be adhered to?

'2. If not, does the determination of invalidity in the Winegard litigation bind the respondents in this case?'

I

In Triplett v. Lowell, 297 U.S. 638, 56 S.Ct. 645, 80 L.Ed. 949, this Court held:

'Neither reason nor authority supports the contention that an adjudication adverse to any or all the claims of a patent precludes another suit upon the same claims against a different defendant. While the earlier decision may be 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.' 297 U.S., at 642, 56 S.Ct., at 647.

The holding in Triplett has been at least gently criticized by some judges. In its opinion in the instant case, the Court of Appeals for the Seventh Circuit recognized the Triplett rule but nevertheless remarked that it 'would seem sound judicial policy that the adjudication of (the question of the Isbell patent's validity) 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.' 422 F.2d, at 772.⁵

In its brief here, the Foundation urges that the rule of Triplett be maintained. Petitioner B-T's brief took the same position, stating that '(t) hough petitioners stand to gain by any such result, we cannot urge the destruction of a long-accepted safeguard for patentees merely for the expediency of victory.' Brief for Petitioner 12. The Government, however, appearing as amicus curiae, urges that Triplett was based on uncritical acceptance of the doctrine of mutuality of estoppel, since limited significantly, and that the time has come to modify Triplett so that 'claims of estoppel in patent cases (are) considered on a case by case basis, giving due weight to any factors which would point to an unfair or anomalous result from their allowance.' Brief for the United States 7. The Government's position was spelled out in a brief filed more than a month after petitioner B-T filed its brief.

At oral argument the following colloquy occurred between the Court and counsel for B-T:

'Q. You're not asking for Triplett to be overruled?

'A. No. I'm not. I maintain that my brother here did have a right if there was a genuine new issue or some other interpretation of the (patent) claim or some interpretation of law in another circuit that's different than this Circuit, he had a right to try, under Triplett below, in another circuit.

'In this particular case, where we're stuck with substantially the same documentary evidence, where we were not able to produce (in the Seventh Circuit) even that modicum of expert testimony that existed in the Eighth Circuit, we think there may be as suggested by the Solicitor General, some reason for modification of that document (sic) in a case such as this.' Tr. of Oral Arg. 7—8.

In light of this change of attitude from the time petitioner's brief was filed, we consider that the question of modifying Triplett is properly before us.⁶

II

Triplett v. Lowell exemplified the judge-made doctrine of mutuality of estoppel, ordaining that unless both parties (or their privies) in a second action are bound by a judgment in a previous case, neither party (nor his privy) in the second action may use the prior judgment as deter- minative of an issue in the second action. Triplett was decided in 1936. The opinion stated that 'the rules of the common law applicable to successive litigations concerning the same subject-matter' did...