Radio Corporation of America v. Radio Engineering Laboratories, 619

CourtUnited States Supreme Court
Citation79 L.Ed. 163,293 U.S. 1,55 S.Ct. 928
Docket NumberNo. 619,619
PartiesRADIO CORPORATION OF AMERICA et al. v. RADIO ENGINEERING LABORATORIES, Inc
Decision Date21 May 1934

As Modified on Denial of Rehearing Oct. 8, 1934.

Messrs. Samuel E. Darby, Jr., of New York City, and Thomas G. Haight, of Jersey City, N.J., for petitioners.

Mr. William H. Davis, of New York City, for respondent.

Mr. Justice CARDOZO delivered the opinion of the Court.

The petitioners, assignees of two patents, Nos. 1,507,016 and 1,507,017, granted to Lee De Forest on September 2, 1924, have sued to restrain an infringement and for other relief.

The respondent, defendant in the trial court, admits the infringement if the patents are valid, but maintains that they are void in that they were issued to a patentee who was not the first inventor.

Long before this suit the rival claimants to the invention, Armstrong and De Forest, had fought out between themselves the legal battle now renewed. The outcome of their contest was a decree whereby priority of invention was found in accordance with the patents now assailed by the respondent, a decree binding on the claimants and their several asignees. For the purpose of any controversy between Armstrong and De Forest, the validity of the patents must be accepted as a datum. Even for the purpose of a controversy with strangers, there is a presumption of validity, a presumption not to be overthrown except by clear and cogent evidence. The question is whether the respondent has sustained that heavy burden.

At the outset there were four claimants to priority of title. All four, acting independently, had made the same or nearly the same discovery at times not widely separate. The prize of an exclusive patent falls to the one who had the fortune to be first. Du Bois v. Kirk, 158 U.S. 58, 66, 15 S.Ct. 729, 39 L.Ed. 895; Evans v. Eaton, 3 Wheat. 454, 4 L.Ed. 433. The others gain nothing for all their toil and talents. Of the four claimants Langmuir filed an application for a patent on October 29, 1913, claiming August 1, 1913, as the date of his invention. Armstrong filed an application on October 29, 1913, and a second one on December 18, 1913, fixing the date of his invention as the fall of 1912 or the beginning of 1913. As early as October 6, 1914, he received a patent covering the subject-matter of his first application (patent No. 1,113,149), but not the subject-matter of his second. Meissner filed an application on March 16, 1914, fixing the date of his invention as April 9, 1913. De Forest filed an application on March 20, 1914, and another on September 23, 1915, fixing as the date of his invention August 6, 1912, the earliest date of all, which would make him the first inventor if the claim could be made good.

Interferences were declared by the Patent Office as the result of these conflicting applications. One involved the applications of De Forest and Langmuir; another the applications of De Forest, Langmuir, and Meissner; a third the applications by De Forest, Langmuir, and Meissner and also the second one of Armstrong's, the only one of his then pending. While these interferences were still undecided, Armstrong and his assignee brought suit for the infringement of patent No. 1,113,149, which had been issued to him in October, 1914, the defendant in that suit being the De Forest Radio Telephone & Telegraph Company. The District Court (per Mayer, J.) fixed the date of Armstrong's discovery as January 31, 1913, rejected De Forest's claim to discovery on August 6, 1912, and gave an interlocutory decree for an injunction and an accounting. 279 F. 445. The Circuit Court of Appeals per Manton, J.) affirmed. 280 F. 584. In the meanwhile the interference proceedings went on in the Patent Office. On March 31, 1923, the Commissioner of Patents rendered a decision which gave priority to Armstrong. There was an appeal to the Court of Appeals for the District of Columbia, invested at that time with supervisory jurisdiction in the administration of the patent laws. Butterworth v. U.S. ex rel. Hoe, 112 U.S. 50, 60, 5 S.Ct. 25, 28 L.Ed. 656; Postum Cereal Co. v. California Fig Nut Co., 272 U.S. 693, 47 S.Ct. 284 71 L.Ed. 478. The Court of Appeals reversed the decision of the Commissioner, and decreed priority of invention in favor of De Forest. 54 App.D.C. 391, 298 F. 1006. On September 2, 1924, pursuant to the mandate of that court, patents Nos. 1,507,016 and 1,507,017 were issued by the Patent Office.

The fight was far from ended. Already there was pending in the District Court in Delaware a suit brought under the authority of R.S. § 4915 (35 U.S.C. § 63 (35 USCA § 63))1 to direct the issuing of a patent to Meissner or his assigns. After the decree in the District of Columbia, there was a suit in Pennsylvania under R.S. § 4918 (35 U.S.C. § 66 (35 USCA § 66)),2 which was brought by the assignee of the De Forest patents to set aside the Armstrong patent of October, 1914 (No. 1,113,149), all the interested parties being joined as defendants. Later on there was still another suit in Delaware, under R.S. § 4915, to establish priority for Langmuir. The suit in Pennsylvania came to a decree in July, 1926. The decision was in favor of De Forest ((D.C.) 13 F.(2d) 1014), the court adjudging that the holder of the Armstrong patent had failed to overcome the presumption of validity attaching to the De Forest patents under the administrative ruling in the District of Columbia, and that the earlier decision in New York (279 F. 445, 280 F. 584) did not sustain the defense of res judicata for the reason that the cause had never gone to final judgment. In February and March. 1927, the two suits in Delaware were decided the same way. (D.C.) 18 F.(2d) 338; (D.C.) 18 F.(2d) 345. The decrees in the three suits came up for review before the Circuit Court of Appeals for the Third Circuit. All three were affirmed with a comprehensive opinion by Woolley, J., marshaling the evidence and weighing the competing arguments. As the upshot the court held that the presumption of validity which protected the De Forest patents had not been overthrown, and that apart from any presumption De Forest had made out his title as the original inventor. 21 F.(2d) 918. Writs of certiorari brought the controversy here. 278 U.S. 562, 49 S.Ct. 34, 73 L.Ed. 507. This court affirmed the decree on the authority of Morgan v. Daniels, 153 U.S. 120, 14 S.Ct. 772, 38 L.Ed. 657, and Victor Talking Machine Co. v. Brunswick-Balke-Collender Co., 273 U.S. 670, 47 S.Ct. 474, 71 L.Ed. 832. The first of those cases lays down the rule that 'where the question decided in the patent office is one between contesting parties as to priority of invention, the decision there made must be accepted as controlling upon that question of fact in any subsequent suit between the same parties, unless the contrary is established by testimony which in character and amount carries thorough conviction.' 153 U.S. at page 125, 14 S.Ct. 772, 773. The second case (273 U.S. 670, 47 S.Ct. 474, 71 L.Ed. 832) adds to that presumption of validity the support of the familiar principle, repeatedly applied in our decisions, that the concurrent findings of the courts below will be accepted by this court 'unless clear error is shown.' See, e.g., United States v. State Investment Co., 264 U.S. 206, 211, 44 S.Ct. 289, 290, 68 L.Ed. 639; Texas & N.O.R. Co. v. Brotherhood of Railway Clerks, 281 U.S. 548, 558, 50 S.Ct. 427, 74 L.Ed. 1034; United States v. Commercial Credit Co., 286 U.S. 63, 67, 52 S.Ct. 467, 76 L.Ed. 978.

One might have supposed that controversy would have been stilled after all these years of litigation. It proved to be not so. The petitioners, after repelling every assault from within the ranks of rival claimants, found it necessary to meet a challenge from without. The respondent, Radio Engineering Laboratories, Inc., allying itself with Armstrong, who is paying its expenses, insists that the invention is at large for the reason that De Forest, who received the patents, is not the true inventor, and that Armstrong, who is the inventor, is barred by a final judgment, conclusive between himself and the pretender, from obtaining the patent that is due him, and with it an exclusive right. The evidence in this suit for an infringement is a repetition, word for word, of the evidence in the earlier suits, so far as material to the conflicting claims of Armstrong and De Forest. What has been added is so nearly negligible that to all intents and purposes the records are the same. The District Court (per Campbell, J.) held upon that evidence that the respondent had not succeeded in overcoming the De Forest patents, and entered a decree for the complainants. 1 F.Supp. 65. Upon appeal to the Court of Appeals for the Second Circuit, the decree was reversed by a divided court with instructions to dismiss the bill. 66 F.(2d) 768. A majority of the court adhered to the conclusion which it had announced eleven years before. 280 F. 584. A dissenting opinion enforced the view that De Forest's title as inventor, conclusively established as between himself and Armstrong, should be held, upon substantially the same record, to be good also against others. A writ of certiorari issued from this court. 290 U.S. 624, 54 S.Ct. 373, 78 L.Ed. 544.

The judgments in the suits between Armstrong and De Forest and their respective assignees are not conclusive upon the respondent, a stranger to the record. This is so by force of the accepted limitations of the doctrine of res judicata. It is so by force of the statute (R.S. § 4918), which provides in so many words that 'no such judgment or adjudication shall affect the right of any person except the parties to the suit and those deriving title under them subsequent to the rendition of such judgment.' But the respondent does not move very far upon the pathway to success by showing that what has been heretofore determined is without conclusive force. A patent...

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