Technograph Printed Circuits, Ltd. v. United States

Decision Date17 February 1967
Docket NumberNo. 127-62.,127-62.
Citation372 F.2d 969
PartiesTECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Inc. v. The UNITED STATES and the BENDIX CORPORATION and the Hewlett-Packard Company, Third-Party Defendants.
CourtU.S. Claims Court

COPYRIGHT MATERIAL OMITTED

Walter J. Blenko, Jr., Pittsburgh, Pa., attorney of record, for plaintiff; Walter J. Blenko, Pittsburgh, Pa., M. Victor Leventritt, New York City, and Martin E. Hogan, Jr., Washington, D. C., of counsel.

Michael W. Werth, Washington, D. C., with whom was Acting Asst. Atty. Gen., J. William Doolittle, for defendant.

James L. O'Brien, Detroit, Mich., Donald J. Simpson, Chicago, Ill., and Jean C. Chognard, Palo Alto, Cal., for third-party defendants.

Before COWEN, Chief Judge, JONES, Senior Judge, and LARAMORE, DAVIS and COLLINS, Judges.

DAVIS, Judge.

Plaintiff is the exclusive licensee of several patents relating to the manufacture of "printed circuit" boards for electrical apparatus.1 Alleging that its patented invention was used without a license in the manufacture of certain articles purchased by the United States from the Bendix Corporation and the Hewlett-Packard Company, plaintiff seeks its statutory remedy of "reasonable and entire compensation" against the United States. 28 U.S.C. § 1498 (1964). Technograph contends that several of its patents have been infringed, but only two, Nos. 2,441,960 (Patent '960) and 2,706,697 (Patent '697), are involved in the current motion. Under former Rule 19 (now Rule 23) of this court, the Bendix Corporation and the Hewlett-Packard Company have been brought in as third-party defendants on the basis of their contracts with the United States providing for indemnification against patent infringement liability.

This suit is one of a series of more than ten patent infringement actions brought by Technograph in various jurisdictions throughout the country. See Technograph Printed Circuits, Ltd. v. Methode Electronics, Inc., 356 F.2d 442, 443 (C.A.7, 1966), cert. denied, 384 U.S. 950, 86 S.Ct. 1570, 16 L.Ed.2d 547. In the District of Maryland, Bendix Aviation Corporation was charged with infringement of three patents, including Nos. '960 and '697.2 The District Court, after trial, found the patents invalid for several reasons, including obviousness in view of the prior art. Technograph Printed Circuits, Ltd. v. Bendix Aviation Corp., 218 F.Supp. 1-67 (D.Md.1963). On appeal, the Fourth Circuit affirmed per curiam, stating: "After careful consideration of the record, the arguments and the briefs of counsel, we are persuaded that the patent claims are invalid for obviousness in the light of the prior art for the reasons fully discussed in the opinion of the District Court." 327 F. 2d 497, 498 (1964), cert. denied, 379 U.S. 826, 85 S.Ct. 53, 13 L.Ed.2d 36.

Relying upon the Fourth Circuit's decision, the United States moved for summary judgment as to Patent Nos. '960 and '697. The argument was that the patents are invalid on a number of grounds including obviousness in view of the prior art. The Court of Appeals' judgment of patent invalidity was urged as having either res judicata or controlling effect. Plaintiff countered with allegations that the earlier decision "is grounded upon fundamental shortcomings of fact," and statements that it expects to present newly discovered evidence which will lead to a different result. On November 19, 1965, this court, by order and without oral argument, denied without prejudice the United States' motion.

The Government now renews its motion for partial summary judgment and asks the court, again, to hold that the plaintiff patentee should be collaterally estopped by the Bendix Aviation Corp. decision to relitigate the validity of the '960 and '697 patents even though the United States was neither a party, nor in privity with a party, to the prior judgment. Alternatively, the defendant suggests that it was in privity with Bendix, the successful defendant in the earlier action.

Especially for patent litigation, a traditional element of the doctrine of collateral estoppel has been the requirement of mutuality of estoppel. According to the received view, for a judgment to prevent relitigation of an issue once decided, the estoppel of the judgment must ordinarily be mutual. (The conventional doctrine recognizes some exceptions). Since an adjudication of patent validity in one action is not binding in a second action against a different defendant, the rule tells us that a patentee in a second action should not be bound by an adjudication of invalidity in an earlier suit. The Government submits, however, that this iron law of mutuality of estoppel has been corroding for some years, and specifically asks us to follow Nickerson v. Pep Boys — Manny, Moe & Jack, 247 F.Supp. 221 (D.Del.1965), in which the court rejected mutuality in a patent infringement action. At the Government's request, and in the light of decisions of the past three decades, and of professional commentary, we review the relevant case law, investigate the direction and extent of the erosion in the requirement of mutuality, and explore the basic policies at the core of the doctrine of collateral estoppel as it applies in this court and to patent-validity litigation.3

I.

We must start by acknowledging that the last word from the Supreme Court has been an express reaffirmation of mutuality of estoppel for patent-validity litigation. In Triplett v. Lowell, 297 U. S. 638, 56 S.Ct. 645, 80 L.Ed. 949 (1936), as in the case at bar, the plaintiff had sued in a district court to restrain infringement of its patents. The court of appeals, on review, held each litigated claim invalid. Plaintiff subsequently brought a second suit against different defendants for infringement of claims held invalid in the first action. The Supreme Court unequivocally announced that "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" id. at 642, 56 S.Ct. at 647). See, also, id. at 644, 645, 56 S.Ct. 645.4 Since 1936 the Supreme Court has not intimated any retreat from this holding. The same theory was followed in Maytag Co. v. Hurley Machine Co., 307 U.S. 243, 245, 59 S.Ct. 857, 83 L.Ed. 1264 (1939), where the opinion indicated that, once a patent claim had been declared invalid, it, alone or with other claims, might have been made the basis of a different suit against a different party. In Commissioner of Internal Revenue v. Sunnen, 333 U.S. 591, 597-598, 601, 602, 68 S.Ct. 715, 92 L.Ed. 898 (1948), the Court recast its general position on res judicata and collateral estoppel without suggesting in any way that the defense could be used by one not a party to the prior suit (or a privy). More recently, in a res judicata situation, the Court prevented five defendants who were neither parties nor privies to the earlier action from invoking the prior judgment against the plaintiff on what was assumed to be the same cause of action. Lawlor v. National Screen Service Corp., 349 U.S. 322, 329-330, 75 S.Ct. 865, 99 L.Ed. 1122 (1955).

In patent litigation, the courts of appeals and the district courts have continued, with the one exception of the Nickerson decision, to adhere to the Triplett rule — even though the very same court may dispense with the requirement of mutuality in other contexts. Judge Learned Hand, speaking for the Second Circuit, said, "it must not be forgotten that the decision of a single court, whether district, or court of appeals, does not settle the question of patent validity. It is the usual, if not universal, custom of practitioners if the stake is enough, not to rest content with a single decision of invalidity, but to seek another forum. * * *" Harries v. Air King Products Co., 183 F.2d 158, 163 (C.A.2, 1950); see also Gold Seal Importers, Inc. v. Westerman-Rosenberg, Inc., 133 F.2d 192 (C.A.2, 1943); Bechik Products, Inc. v. Flexible Products, Inc., 225 F.2d 603, 606 (C.A.2, 1955); Tatko Bros. Slate Co. v. Hannon, 270 F.2d 571, 572 (C.A.2, 1959), cert. denied, 361 U.S. 915, 80 S.Ct. 260, 4 L.Ed.2d 185. Similar declarations have been made in the First Circuit (Automatic Radio Mfg. Co., v. Hazeltine Research, Inc., 176 F.2d 799, 808 (1949), aff'd, 339 U.S. 827, 70 S.Ct. 894, 94 L.Ed. 1312 (1950)); Third Circuit (Urquhart v. Commissioner of Internal Revenue, 215 F.2d 17, 20 (1954); see also, Pierce v. DuMont Laboratories, Inc., 156 F.Supp. 237, 239, 240, (D.Del.1957)); Fourth Circuit (S. H. Kress & Co. v. Aghnides, 246 F.2d 718, 720 (1957), cert. denied, 355 U.S. 889, 78 S.Ct. 261, 2 L.Ed.2d 189); Fifth Circuit (Park-In Theatres, Inc. v. Waters, 185 F.2d 193, 195-96 (1950)); Seventh Circuit (Aghnides v. Holden, 226 F.2d 949, 950 (1955); Hazeltine Research, Inc. v. General Electric Co., 183 F.2d 3, 6 (1950); Appleton Toy & Furniture Co. v. Lehman Co., 165 F.2d 801, 803 (1948)); and very recently by the District Court for the District of Columbia (Abington Textile Machinery Works v. Carding Specialists Ltd., 249 F.Supp. 823 (1965)). See also Industrial Models Corp. v. Kurtz, 93 F.Supp. 336, 339-340 (E.D.Mich. 1950). In recent litigation involving the very patents now in suit, the Seventh Circuit held that the Fourth Circuit's decision in Bendix did not erect an estoppel and was not res judicata. The court determined that there existed genuine issues of material fact, and reversed an order granting the defendant's motion for summary judgment. Technograph Printed Circuits, Ltd. v. Methode Electronics, Inc., supra, 356 F.2d 442 (1966).

In this court there is no square ruling in a patent case, but the guidelines drawn from non-patent litigation all point toward rejecting the estoppel defense here. We have adhered broadly to the principles of res judicata and collateral estoppel established by the Supreme Court. See Creek Nation v. United States, 168 Ct.Cl....

To continue reading

Request your trial
25 cases
  • Securities and Exchange Commission v. Crofters, Inc.
    • United States
    • U.S. District Court — Southern District of Ohio
    • August 10, 1972
    ...v. Nunan, 141 F.2d 927 (C.A.2, 1944); Glass v. U. S. Rubber Co., 382 F.2d 378 (C.A.10, 1967); Technograph Printed Circuits Ltd. v. United States, 372 F.2d 969, 178 Ct.Cl. 543 (1967); Rachel v. Hill, supra. Defendant Clark's motion for summary judgment on this ground will therefore be (d) Pr......
  • Autogiro Company of America v. United States
    • United States
    • U.S. Claims Court
    • October 13, 1967
    ...in a privy relationship with the parties may avoid litigation by the use of collateral estoppel. See Technograph Printed Circuits, Ltd. v. United States, 372 F.2d 969, 178 Ct.Cl. 543 (1967). Although the patentee might be, in Judge Frank's terms, "wiped out" in this suit, he is not, at leas......
  • King v. United States
    • United States
    • U.S. Claims Court
    • February 16, 1968
    ...estop both the plaintiff and the United States from relitigating the issues here. See Technograph Printed Circuits, Ltd. v. United States, 372 F.2d 969, 974-975, 178 Ct.Cl. 543, 550-551 (1967); Green v. United States, 172 F.Supp. 679, 145 Ct.Cl. 628 (1959); Edgar v. United States, 171 F.Sup......
  • Technograph Printed Cir. v. Packard Bell Electronics Corp.
    • United States
    • U.S. District Court — Central District of California
    • August 8, 1968
    ...any event such a determination must first be made by the district court." 41. The Court of Claims in Technograph Printed Circuits, Ltd. v. United States (1967), 372 F.2d 969, 178 Ct.Cl. 543, refused to breach "the iron law of mutuality" (372 F.2d p. 972) in favor of the Government in the ca......
  • Request a trial to view additional results
2 books & journal articles
  • Tesla, Marconi, and the great radio controversy: awarding patent damages without chilling a defendant's incentive to innovate.
    • United States
    • Missouri Law Review Vol. 73 No. 3, June 2008
    • June 22, 2008
    ...raises issues significant to the public as well as to the named parties.'" (quoting Technograph Printed Circuits, Ltd. v. United States, 372 F.2d 969, 977-78 (Ct. Cl. 1967))); see also id. at 343 (The Supreme Court has long held that "'[a] patent by its very nature is affected with a public......
  • Administrating Patent Litigation
    • United States
    • University of Whashington School of Law University of Washington Law Review No. 90-1, September 2020
    • Invalid date
    ...a good patent be ultimately upheld as that a bad one be definitively stricken." (quoting Technograph Printed Circuits v. United States, 372 F.2d 969, 977 (Fed. Cl. 1967))). 235. Generating Antibiotic Incentives Now Act of 2011, Pub. L. No. 112-114 (codified in 21 U.S.C § 355 (2012)). 236. 2......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT