Lear, Incorporated v. Adkins, No. 56

CourtUnited States Supreme Court
Writing for the CourtHARLAN
Citation23 L.Ed.2d 610,89 S.Ct. 1902,395 U.S. 653,162 USPQ 1
PartiesLEAR, INCORPORATED, Petitioner, v. John S. ADKINS
Docket NumberNo. 56
Decision Date16 June 1969

395 U.S. 653
89 S.Ct. 1902
23 L.Ed.2d 610
LEAR, INCORPORATED, Petitioner,

v.

John S. ADKINS.

No. 56.
Argued Nov. 20 and 21, 1968.
Decided June 16, 1969.

[Syllabus from pages 653-654 intentionally omitted]

Page 655

C. Russell Hale, Pasadena, Cal., for petitioner.

Lawrence G. Wallace, Washington, D.C., for the United States, as amicus curiae, by special leave of Court.

Peter R. Cohen, Beverly Hills, Cal., for respondent.

Mr. Justice HARLAN delivered the opinion of the Court.

In January of 1952, John Adkins, an inventor and mechanical engineer, was hired by Lear, Incorporated, for the purpose of solving a vexing problem the company had encountered in its efforts to develop a gyroscope which would meet the increasingly demanding requirements of the aviation industry. The gyroscope is an essential component of the navigational system in all aircraft, enabling the pilot to learn the direction and altitude of his airplane. With the development of the faster airplanes of the 1950's, more accurate gyroscopes were needed, and the gyro industry consequently was casting about for new techniques which would satisfy this need in an economical fashion. Shortly after Adkins was hired, he developed a method of construction at the company's California facilities which improved gyroscope accuracy at a low cost. Lear almost immediately incorporated Adkins' improvements into its production process to its substantial advantage.

The question that remains unsettled in this case, after eight years of litigation in the California courts, is whether Adkins will receive compensation for Lear's use of those improvements which the inventor has subsequently patented. At every stage of this lawsuit, Lear has sought to prove that, despite the grant of a patent

Page 656

by the Patent Office, none of Adkins' improvements were sufficiently novel to warrant the award of a monopoly under the standards delineated in the governing federal statutes. Moreover, the company has sought to prove that Adkins obtained his patent by means of a fraud on the Patent Office. In response, the inventor has argued that since Lear had entered into a licensing agreement with Adkins, it was obliged to pay the agreed royalties regardless of the validity of the underlying patent.

The Supreme Court of California unanimously vindicated the inventor's position. While the court recognized that generally a manufacturer is free to challenge the validity of an inventor's patent, it held that 'one of the oldest doctrines in the field of patent law establishes that so long as a licensee is operating under a license agreement he is estopped to deny the validity of his licensor's patent in a suit for royalties under the agreement. The theory underlying this doctrine is that a licensee should not be permitted to enjoy the benefit afforded by the agreement while simultaneously urging that the patent which forms the basis of the agreement is void.' 67 Cal.2d 882, 891, 64 Cal.Rptr. 545, 549, 435 P.2d 321, 325—326 (1967).

Almost 20 years ago, in its last o nsideration of the doctrine, this Court also invoked an estoppel to deny a licensee the right to prove that his licensor was demanding royalties for the use of an idea which was in reality a part of the public domain. Automatic Radio Manufacturing Co. v. Hazeltine Research, Inc., 339 U.S. 827, 836, 70 S.Ct. 894, 899, 94 L.Ed. 1312 (1950). We granted certiorari in the present case, 391 U.S. 912, 88 S.Ct. 1810, 20 L.Ed.2d 651, to reconsider the validity of the Hazeltine rule in the light of our recent decisions emphasizing the strong federal policy favoring free competition in ideas which do not merit patent protection. Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964); Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 84 S.Ct. 779, 11 L.Ed.2d 669 (1964).

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I.

At the very beginning of the parties' relationship, Lear and Adkins entered into a rudimentary one-page agreement which provided that although '(a)ll new ideas, discoveries, inventions, etc., related to * * * vertical gyros become the property of Mr. John S. Adkins,' the inventor promised to grant Lear a license as to all ideas he might develop 'on a mutually satisfactory royalty basis.'1 As soon as Adkins' labors yielded tangible results, it quickly became apparent to the inventor that further steps should be taken to place his rights to his ideas on a firmer basis. On February 4, 1954, Adkins filed an application with the Patent Office in an effort to gain federal protection for his improvements. At about the same time, he entered into a lengthy period of negotiations with Lear in an effort to conclude a licensing agreement which would clearly establish the amount of royalties that would be paid.

These negotiations finally bore fruit on September 15, 1955, when the parties approved a complex 17-page contract which carefully delineated the conditions upon which Lear promised to pay royalties for Adkins' improvements. The parties agreed that if 'the U.S. Patent Office refuses to issue a patent on the substantial claims (contained in Adkins' original patent application) or if such a patent so issued is subsequently held invalid, then in any of such events Lear at its option shall have the right forthwith to terminate the specific license so affected or to terminate this entire Agreement * * *.' § 6 (2 App. 138).

Page 658

As the contractual language indicates, Adkins had not obtained a final Patent Office decision as to the patentability of his invention at the time the licensing agreement was concluded. Indeed, he was not to receive a patent until January 5, 1960. This long delay has its source in the special character of Patent Office procedures. The regulations do not require the Office to make a final judgment on an invention's patentability on the basis of the inventor's original application.2 While it sometimes happens that a patent is granted at this early stage, it is far more common for the Office to find that although certain of the applicant's claims may be patentable, certain others have been fully anticipated by the earlier developments in the art. In such a situation, the Patent Office does not attempt to separate the wheat from the chaff on its own initiative. Instead, it rejects the application, giving the inventor the right to make an amendment which narrows his claim to cover only those aspects of the invention which are truly novel.3 It often happens, however, that even after an application is amended, the Patent Office finds that some of the remaining claims are unpatentable. When this occurs, the agency again issues a rejection which is subject to further amendment. 4 And so h e process of rejection and amendment continues until the Patent Office Examiner either grants a patent or concludes that none of the inventor's claims could possibly be patentable, at which time a final rejection is entered on the Office's records.5 Thus, when Adkins made his original application in 1954, it took the average inventor more than three years before he obtained a final administrative decision on the patentability of his ideas, with the Patent

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Office acting on the average application from two to four times.6

The progress of Adkins' effort to obtain a patent followed the typical pattern. In his initial application, the inventor made the ambitious claim that his entire method of constructing gyroscopes was sufficiently novel to merit protection. The Patent Office, however, rejected this initial claim, as well as two subsequent amendments, which progressively narrowed the scope of the invention sought to be protected. Finally, Adkins narrowed his claim drastically to assert only that the design of the apparatus used to achieve gyroscope accuracy was novel.7 In response, the Office issued its 1960 patent, granting a 17-year monopoly on on this more modest claim.

During the long period in which Adkins was attempting to convince the Patent Office of the novelty of his ideas, however, Lear had become convinced that Adkins would never receive a patent on his invention and that it should not continue to pay substantial royalties on ideas which had not contributed substantially to the development of the art of gyroscopy. In 1957, after Adkins' patent application had been rejected twice, Lear announced that it had searched the Patent Office's files and had found a patent which it believed had fully anticipated Adkins' discovery. As a result, the company stated that it would no longer pay royalties on the large number of gyroscopes it was producing at its plant in Grand Rapids, Michigan (the Michigan gyros). Payments were continued on the smaller number of gyros produced at the company's

Page 660

California plant (the California gyros) for two more years until they too were terminated on April 8, 1959.

As soon as Adkins obtained his patent in 1960, he brought this lawsuit in the California Superior Court. He argued to a jury that both the Michigan and the California gyros incorporated his patented apparatus and that Lear's failure to pay royalties on these gyros was a breach both of the 1955 contract and of Lear's quasi-contractual obligations. Although Lear sought to raise patent invalidity as a defense, the trial judge directed a verdict of.$16,351.93 for Adkins on the California gyros, holding that Lear was estopped by its licensing agreement from questioning the inventor's patent. The trial judge took a different approach when it came to considering the Michigan gyros. Noting that the company claimed that it had developed its Michigan designs independently of Adkins' ideas, the court instructed the jury to award the inventor recovery only if it was satisfied that Adkins' invention was novel, within the meaning of the federal patent laws. When the jury returned a verdict for Adkins of $888,122.56 on the Michigan gyros,8 the trial judge granted Lear's motion for...

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505 practice notes
  • Part II
    • United States
    • Federal Register December 12, 2003
    • December 12, 2003
    ...employee of the Office. All decisions made by the Office in patent and trademark matters affect the public interest. See Lear v. Adkins, 395 U.S. 653 (1969). Many of the decisions made by the Office are made ex parte. Accordingly, practitioners must cite to the Office known authority that i......
  • Practice and procedure: Patent and trademark cases rules of practice; representation of others before Patent and Trademark Office,
    • United States
    • Federal Register December 12, 2003
    • December 12, 2003
    ...employee of the Office. All decisions made by the Office in patent and trademark matters affect the public interest. See Lear v. Adkins, 395 U.S. 653 (1969). Many of the decisions made by the Office are made ex parte. Accordingly, practitioners must cite to the Office known authority that i......
  • Lee Pharmaceuticals v. Kreps, No. 76-2082
    • United States
    • United States Courts of Appeals. United States Court of Appeals (9th Circuit)
    • June 29, 1978
    ...inventors' discoveries to become public knowledge before a patent is secured. As the Court pointed out in Lear, Inc. v. Adkins (1969) 395 U.S. 653, 671-72 & n. 17, 89 S.Ct. 1902, 1911-1912, 23 L.Ed.2d 610: "(U)ntil a patent issues, a potential licensee may not learn his licensor's ideas sim......
  • Kimble v. Marvel Entm't, LLC, No. 13–720.
    • United States
    • United States Supreme Court
    • June 22, 2015
    ...Mfg. Co., 329 U.S. 394, 400–401, 67 S.Ct. 416, 91 L.Ed. 374 (1947) (ruling that Scott Paper applies to licensees); Lear, Inc. v. Adkins, 395 U.S. 653, 668–675, 89 S.Ct. 1902, 23 L.Ed.2d 610 (1969) (refusing to enforce a contract requiring a licensee to pay royalties while contesting a paten......
  • Request a trial to view additional results
498 cases
  • Lee Pharmaceuticals v. Kreps, No. 76-2082
    • United States
    • United States Courts of Appeals. United States Court of Appeals (9th Circuit)
    • June 29, 1978
    ...inventors' discoveries to become public knowledge before a patent is secured. As the Court pointed out in Lear, Inc. v. Adkins (1969) 395 U.S. 653, 671-72 & n. 17, 89 S.Ct. 1902, 1911-1912, 23 L.Ed.2d 610: "(U)ntil a patent issues, a potential licensee may not learn his licensor's ideas sim......
  • Kimble v. Marvel Entm't, LLC, No. 13–720.
    • United States
    • United States Supreme Court
    • June 22, 2015
    ...Mfg. Co., 329 U.S. 394, 400–401, 67 S.Ct. 416, 91 L.Ed. 374 (1947) (ruling that Scott Paper applies to licensees); Lear, Inc. v. Adkins, 395 U.S. 653, 668–675, 89 S.Ct. 1902, 23 L.Ed.2d 610 (1969) (refusing to enforce a contract requiring a licensee to pay royalties while contesting a paten......
  • Smithkline Beecham Corp. v. Apotex Corp., No. 03-1285.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • April 8, 2005
    ...S.Ct. 424, 91 L.Ed. 380 (1947); Pope Mfg. Co. v. Gormully, 144 U.S. 224, 234, 12 S.Ct. 632, 36 L.Ed. 414 (1892); and Lear, Inc. v. Adkins, 395 U.S. 653, 670, 89 S.Ct. 1902, 23 L.Ed.2d 610 5. The district court's maze of alternative claim constructions and theories finding Apotex not liable ......
  • CVD, Inc. v. Raytheon Co., No. 84-1652
    • United States
    • United States Courts of Appeals. United States Court of Appeals (1st Circuit)
    • September 23, 1985
    ...U.S. 13, 18, 84 S.Ct. 1051, 1055, 12 L.Ed.2d 98 (1964); Wegmann v. London, 648 F.2d 1072, 1074 (5th Cir.1981); Cf. Lear, Inc. v. Adkins, 395 U.S. 653, 89 S.Ct. 1902, 23 L.Ed.2d 610 It is also well established that the federal interest in the "full and free use of ideas in the public domain"......
  • Request a trial to view additional results
2 firm's commentaries
  • Minerva v. Hologic: Assignor Estoppel Doctrine Retained, But Limited
    • United States
    • Mondaq United States
    • August 18, 2021
    ...from later contending that what was assigned is a nullity."31 Although the Supreme Court abolished licensee estoppel in Lear v. Adkins, 395 U.S. 653, 666 (1969), the Federal Circuit previously concluded that "nothing in Lear eliminated assignor estoppel" and that public policy favored the a......
  • Minerva v. Hologic: Assignor Estoppel Doctrine Retained, But Limited
    • United States
    • Mondaq United States
    • August 18, 2021
    ...from later contending that what was assigned is a nullity."31 Although the Supreme Court abolished licensee estoppel in Lear v. Adkins, 395 U.S. 653, 666 (1969), the Federal Circuit previously concluded that "nothing in Lear eliminated assignor estoppel" and that public policy favored the a......
4 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
    ...Motor Co., 166 F. Supp. 551,565(S.D.N.Y.1958). 856 THE ANTITRUST BULLETINRESTRICTIONSUPONCHALLENGES TO VALIDITY(a)InLear, Inc. v. Adkins, 395 U.S. 653(1969),theSupreme Court heldthatprovisions in patent licensing agree.ments which preclude the licensee from contesting the validityof the lic......
  • Antitrust's “State Action” Doctrine and the Policy of the Commerce Clause
    • United States
    • Antitrust Bulletin Nbr. 39-3, September 1994
    • September 1, 1994
    ...by market forces."65 Arguably, Congress made theidentical determination in enacting the antitrust laws.w59 376 U.S. 225 (1964).60 395 U.S. 653 (1969).61 489 U.S. 141 (1989).62 Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 479 (1974).63 474 U.S. 409 (1986).64 15 U.S.C. §§ 3301-3432 (1982).6......
  • INFRINGEMENT, UNBOUND.
    • United States
    • Harvard Journal of Law & Technology Vol. 32 Nbr. 1, September 2018
    • September 22, 2018
    ...of patents."). (107.) See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 741 (2002). (108.) Lear, Inc. v. Adkins, 395 U.S. 653, 670 (1969) ("[T]he Patent Office is often obliged to reach its decision in an ex parte proceeding, without the aid of the arguments which could......
  • Entrepreneurship and Antitrust Enforcement
    • United States
    • Antitrust Bulletin Nbr. 61-4, December 2016
    • December 1, 2016
    ...in administrative costsfrom greater scrutiny of standard-setting organizations and their business practices. 3. 133 S. Ct. 721 (2013).4. 395 U.S. 653 (1969).5. 135 S. Ct. 1101 (2015).6. Microsoft Corp. v. Motorola, Inc., 696 F. 3d 872 (9th Cir. 2012).7. In re Innovatio IP Ventures, LLC., Pa......

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