Nickerson v. Kutschera

• Decision Date: 23 December 1969
• Docket Number: No. 17814.,17814.
• Citation: 419 F.2d 983
• Parties: Bryan W. NICKERSON, Jr., Appellant, v. Josef KUTSCHERA, A. G. Berkinruth, the Tidewater Oil Company.
• Court: U.S. Court of Appeals — Third Circuit

419 F.2d 983 (1969)

Bryan W. NICKERSON, Jr., Appellant, v. Josef KUTSCHERA, A. G. Berkinruth, the Tidewater Oil Company.

No. 17814.

United States Court of Appeals Third Circuit.

Argued September 22, 1969.

Decided December 23, 1969.

Bryan W. Nickerson, pro se.

John D. Fairchild, Connolly, Bove & Lodge, Wilmington, Del., for appellee.

Before HASTIE, Chief Judge, and McLAUGHLIN and VAN DUSEN, Circuit Judges.

OPINION OF THE COURT

PER CURIAM.

This case is an appeal from the District Court order of January 22, 1969 (1) dismissing, with prejudice, an action for infringement of a patent which had previously been held invalid by the United States Court of Appeals for the Sixth Circuit, see Nickerson v. Bearfoot Sole Company, 311 F.2d 858 (6th Cir.), cert. den. 375 U.S. 815, 84 S.Ct. 48, 11 L.Ed. 2d 50, rehearing den. 375 U.S. 949, 84 S.Ct. 343, 11 L.Ed.2d 279 (1963), and (2) entering final judgment for defendants under F.R.Civ.P. 54(b). The history of this present litigation may be found in Nickerson v. Kutschera, 390 F. 2d 812 (3rd Cir. 1968). After the record was returned to the District Court as a result of that decision, the District Court found, after reviewing the material revealed during the discovery process, that there was in fact no "new evidence"¹ different from that before the Sixth Circuit when it decided Bearfoot Sole, supra, and adopted the rule that in patent cases:

"* * * all issues determined in the first action should be binding in a different cause of action and should not be allowed to be relitigated upon any ground whatever, absent fraud or some other factor invalidating the judgment in the first action."

We are no more willing to disregard a ruling of the Supreme Court of the United States on this record now than we were in March of 1968 when this case was previously before this court. In Triplett v. Lowell, 297 U.S. 638, 56 S.Ct. 645, 80 L.Ed. 949 (1936), that 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 by 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." Id. at 642, 56

S.Ct. at 647.²

It would seem clear that the court expected that "great weight" may be given to the "earlier decision" in the light of all the evidence on the patent's validity and there is no showing that the District Court considered the trial record in the former litigation. We continue to believe that such change as may be desirable in this exception in patent cases to the general rule of collateral estoppel should be made, on a record such as this, by the Supreme Court itself or by Congress, which so far has refused to change the rule in Triplett. In this regard, it is noted that, while the original version of the "Patent Reform Act of 1967"³ introduced in the Senate contained a section providing for collateral estoppel in patent cases,⁴ the present version of that Bill⁵ has deleted this so-called "in rem invalidity" clause.

For the above reasons, the judgment of the District Court will be reversed and the case remanded for disposition on the merits in accordance with this opinion.

HASTIE, Chief Judge (dissenting).

This is the second appeal from an adverse judgment of the district court in appellant Nickerson's third suit for infringement of his original and reissue patents on attachable white sidewalls for vehicle tires. In the first action, the District Court for the Northern District of Ohio held Nickerson's patent valid and infringed. The Court of Appeals for the Sixth Circuit reversed, holding the patents invalid for want of invention. Nickerson v. Bearfoot Sole Co., 6th Cir. 1963, 311 F.2d 858, cert. denied, 375 U.S. 815, 84 S.Ct. 48, 11 L.Ed.2d 50.

Nickerson brought a second suit for infringement of the same patents against a different defendant in the District of Delaware. The defendant's motion for summary judgment was granted on the ground that the judgment of the Sixth Circuit in Bearfoot precluded Nickerson from relitigating the validity of his patents even against a defendant who was not a party to the prior action and who was not closely enough related to a party or to the underlying controversy to have been bound by an adverse judgment in that action under current concepts of privity. Nickerson v. Pep Boys — Manny, Moe & Jack, D.Del.1965, 247 F.Supp. 221. By allowing one who would not have been bound by a prior judgment to invoke the benefit of its preclusive effects, the district court declined to require mutuality of estoppel. Nickerson appealed the Pep Boys decision to this court, but the appeal was dismissed by agreement before argument.

In the present action, Nickerson has sued a third set of defendants for infringing the identical patents held invalid in Bearfoot. The same district court that decided the Pep Boys case once more gave the Bearfoot judgment the effect of collateral estoppel against Nickerson on the issue of patent validity, and dismissed the complaint in an unreported decision.

On the first appeal in this case, we affirmed "the general position of this court in Bruszewski v. United States, 3d Cir. 1950, 181 F.2d 419, cert. denied, 340 U.S. 865, 71 S.Ct. 87, 95 L.Ed. 632, that a strict rule of mutuality no longer has a proper place in the doctrine of res judicata." Nickerson v. Kutschera, 3d Cir. 1968, 390 F.2d 812, 815. It was our view in Bruszewski, and apparently on first appeal in this case as well, that, except for considerations of unfairness shown in a particular case, a party who as plaintiff had asserted a claim and had lost should not be heard again on the merits of that claim even in a second suit which he thereafter has instituted against a stranger to the original claim.¹ In Bruszewski we found unpersuasive the game theory of justice² and the advocacy of symmetry in legal rules which at times have led to a contrary conclusion. We cited Coca-Cola Co. v. Pepsi-Cola Co., Del.Super.1934, 6 W.W.Harr. 124, 36 Del. 124, 172 A. 260, and agreed with the reasoning of the superior court that

"a plaintiff who deliberately selects his forum and there unsuccessfully presents his proofs, is bound by such adverse judgment in a second suit involving all the identical issues already decided. The requirement of mutuality must yield to public policy. To hold otherwise would be to allow repeated litigation of identical questions, expressly adjudicated, and to allow a litigant having lost on a question of fact to re-open and re-try all the old issues each time he can obtain a new adversary not in privity with his former one."

6 W.W.Harr. at 133, 36 Del. at 133, 172 A. at 263. We also cited Bernhard v. Bank of America, 1942, 19 Cal.2d 807, 122 P.2d 892, and agreed with Justice, now Chief Justice Traynor that "no satisfactory rationalization has been advanced for the requirement of mutuality." 19 Cal.2d at 812, 122 P.2d at 895.

But even if the requirement of mutuality in collateral estoppel is thus abandoned in most situations, it has been argued that the complexity and uncertainty of judicial determinations of patent validity justify permitting a multiplicity of such determinations concerning the same patent. One court has said that the issue of patentable invention "is as fugitive, impalpable, wayward, and vague a phantom as exists in the whole paraphernalia of legal concepts." Harries v. Air King Prods. Co., 2d Cir. 1950, 183 F.2d 158, 162. But however that may be, when the issue of validity has been carefully and completely considered and determined adversely to the patentee, there is no more reason for permitting its relitigation than the relitigation of a difficult or complex question that has been decided in any other field, particularly when one considers "the backlog of untried cases which clogs our federal courts. The latter are cases where the litigant asks only for his day in court, not a plurality of days * * *." Aghnides v. Holden, 7th Cir. 1955, 226 F.2d 949, 951 (Schnackenberg, J., concurring).

It is also argued, in support of permissiveness toward relitigation by a patentee after his first effort to vindicate his patent in court has failed, that the Patent Act provides that "a patent shall be presumed valid" and that "the burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting it." 35 U.S.C. § 282. But this section merely confers a procedural advantage upon a patentee when the validity of his patent is challenged in litigation. It in no way suggests that, having lost the suit in which he enjoyed that advantage, he should be permitted to try again.

If the issuance of a patent is to be given weight in deciding whether a patentee should be able to invoke repeated judicial determinations of validity, it must be because the grant is attended by such careful and expert scrutiny that applications for patents on spurious or doubtful inventions will almost never be granted. But the evidence is to the contrary. See Great Atlantic & Pacific Tea Co. v. Supermarket Corp., 1950, 340 U.S. 147, 154, 156-158, 71 S.Ct. 127, 95 L.Ed. 162 (Douglas, J., concurring); Packwood v. Briggs & Stratton Corp., 3d Cir. 1952, 195 F.2d 971, 974. The huge backlog of unprocessed applications and the desire to publish and maintain a record of all potentially useful discoveries seem to influence the patent office to be liberal in its grants. Wright, U. S. Patent System and the Judiciary, 1965, 47 J.Pat.Off. Soc'y 727, 727-28; Comment, Patent Policy and Invention, 1951, 46 Ill.L.Rev. 609, 613 n. 18. Indeed, patent office procedures and policy afford inventors every possible opportunity to secure patents through continuing applications, on the theory that "if time and energy are to be expended, even unnecessarily, it is much more desirable that...