TECHNOGRAPH PRINTED CIR., LTD. v. Martin-Marietta Corp.
Decision Date | 20 February 1973 |
Docket Number | No. 72-1597 to 72-1600.,72-1597 to 72-1600. |
Citation | 474 F.2d 798 |
Parties | TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Inc., Plaintiffs-Appellants, v. MARTIN-MARIETTA CORPORATION, Defendant-Appellee. TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Inc., Plaintiffs-Appellants, v. WESTINGHOUSE ELECTRIC CORPORATION, Defendant-Appellee. TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Inc., Plaintiffs-Appellants, v. McDONNELL AIRCRAFT CORPORATION, Defendant-Appellee. TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Inc., Plaintiffs-Appellants. v. INTERNATIONAL TELEPHONE AND TELEGRAPH CORPORATION, Defendant-Appellee. |
Court | U.S. Court of Appeals — Fourth Circuit |
Sidney Bender, New York City (Aaron Lewittes, Leventritt, Lewittes & Bender, New York City, on brief), for plaintiffs-appellants.
Edward F. McKie, Jr., Washington, D. C. (Benjamin C. Howard and Miles & Stockbridge, Baltimore, Md., on brief), for defendant-appellee, Martin-Marietta Corp.
William E. Schuyler, Jr., Schuyler, Birch, Swindler, McKie & Beckett, Washington, D. C., on brief, for defendant-appellee, Westinghouse Electric Corp.
Jervis Spencer Finney, Ober, Grimes & Shriver, Baltimore, Md., Charles H. Walker, Albert E. Fey and Fish & Neave, New York City, on brief, for defendant-appellee, McDonnell Aircraft Corp.
Dana M. Raymond, Brumbaugh, Graves, Donohue & Raymond, New York City, Norwood B. Orrick and Venable, Baetjer & Howard, Baltimore, Md., on brief, for defendant-appellee, International Telephone and Telegraph Corp.
Before BUTZNER, FIELD and WIDENER, Circuit Judges.
These cases arose when the plaintiffs (appellants) filed patent infringement suits against the defendants (appellees) in the United States District Court for the District of Maryland. The plaintiffs are, respectively, the owner and exclusive licensee under Eisler's United States Patent No. 2,706,697 ('697).1 The complaints allege that the defendants infringed Claims 4 and 10-14 inclusive of '697. The defendants pleaded collateral estoppel, claiming that the same issues before the court had been adversely decided against the plaintiffs in Technograph Printed Circuits, Ltd. v. Bendix Aviation Corporation, 218 F. Supp. 1 (D.Md.1963), aff'd. 327 F.2d 497 (4th Cir. 1964), cert. den. 379 U.S. 826, 85 S.Ct. 53, 13 L.Ed.2d 36 (1964) (hereinafter Bendix). The district court sustained the defendants' pleas of estoppel and dismissed the cases.2 We affirm on the authority of Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971).
In Blonder-Tongue, the Supreme Court granted certiorari following a conflict between the Seventh and Eighth Circuits as to the validity of the patent there in question. The Eighth Circuit had previously held the patent invalid in a suit by the Foundation as plaintiff against another defendant. The Seventh Circuit, in a suit by the Foundation as plaintiff, found the patent to be valid and infringed by Blonder-Tongue Laboratories. The court did not determine the issue of validity but overruled Triplett v. Lowell, 297 U.S. 638, 56 S.Ct. 645, 80 L.Ed. 949 (1936), insofar as it foreclosed a plea of estoppel by judgment by a defendant facing a charge of infringement of a patent brought by a plaintiff which had previously, as a plaintiff, had the patent declared invalid in litigation concerning the validity of the patent.3 The court abolished the doctrine of mutuality of estoppel in such patent cases. It held that a plea of estoppel by judgment could be affirmatively asserted by a defendant where the issue decided in the prior adjudication was identical with the one presented in the present action, where there was a final judgment on the merits in the prior case, and where the party-plaintiff against whom the plea was asserted was a party-plaintiff, or was in privity with such party-plaintiff, who received the adverse decision in the prior adjudication. The following excerpt from the opinion is the best expression of the court's reasoning and explains the standards to be followed in determining whether or not such a plea of estoppel should be sustained:
402 U.S. at 332, 91 S.Ct. at 1444.
The first issue here is whether the parties-plaintiff in the present cases are the same parties-plaintiff as in Bendix. In Bendix, the plaintiffs were Technograph Printed Circuits, Ltd., and Technograph Printed Electronics, Inc. The plaintiffs in the present cases are Technograph Printed Circuits, Ltd., and Technograph Printed Electronics, Inc. Thus, the parties-plaintiff are the same in both instances and the requirement of Blonder-Tongue that the parties-plaintiff be identical or in privity has been met.
We turn to the next requirement of Blonder-Tongue: that the issues in both proceedings be identical. In Bendix, the district court held that claims 4, 5, 10, 14, 15, and 16 of '697 and certain claims of '165 and '960 were invalid for obviousness and anticipation. 218 F.Supp. 1, 31, 58. In the present appeal, no issue is raised concerning '165 or '960. Plaintiffs claim only that claims 4 and 10-14 inclusive of '697 were infringed by the defendants. Although it appears that the validity of claims 11, 12, and 13 of '697 were not specifically mentioned as being invalid in Bendix, an examination of those claims shows that they were dependent on claim 10,4 which was held invalid in Bendix. Also, the trial court's opinion states that the parties here conceded that the issues in suit were identical to the issues decided against plaintiffs in Bendix (340 F.Supp. 423, 425), and this is not contested on appeal. Accordingly, the requirement of Blonder-Tongue that the issues be identical in both proceedings has been complied with.
The next step in determining whether Blonder-Tongue should apply is to ascertain whether plaintiffs were given a full and fair opportunity, procedurally, substantively, and evidentially, to litigate the validity of '697 in Bendix. We conclude that they were.
The Bendix trial took twenty-nine court days, during which the plaintiffs filed 458 exhibits and the defendants 543 exhibits. Several additional days were spent by the court in visiting the plants of Bendix and of licensees of the plaintiffs. Following the last day of trial, the parties filed additional briefs, over 600 pages, followed by two days of argument. No claim was made then, nor is any made now, that the court, in Bendix, excluded any relevant evidence that was offered.
In its decision in Bendix, the district court discussed the...
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