Wahl v. Vibranetics, Inc.

• Decision Date: 02 March 1973
• Docket Number: No. 72-1661.,72-1661.
• Citation: 474 F.2d 971
• Parties: Eugene A. WAHL and Vibra Screw, Inc., Plaintiffs-Appellants, v. VIBRANETICS, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Sixth Circuit

474 F.2d 971 (1973)

Eugene A. WAHL and Vibra Screw, Inc., Plaintiffs-Appellants, v. VIBRANETICS, INC., Defendant-Appellee.

No. 72-1661.

United States Court of Appeals, Sixth Circuit.

Argued December 13, 1972.

Decided March 2, 1973.

Dugald S. McDougall, Chicago, Ill., J. Leonard Walker, Louisville, Ky., Dugald S. McDougall, Chicago, Ill., on brief for plaintiffs-appellants; Percy Foreman, Houston, Tex., of counsel.

Thomas F. McWilliams, Chicago, Ill., for defendant-appellee, M. Brooks Senn, Louisville, Ky., Thomas F. McWilliams, Chicago, Ill., on brief for defendant-appellee; Brown, Miller, Alagia & Senn, Louisville, Ky., Mann, Brown, McWilliams & Bradway, Chicago, Ill., of counsel.

Before MILLER and KENT, Circuit Judges, and O'SULLIVAN, Senior Circuit Judge.

KENT, Circuit Judge.

On March 16, 1965, plaintiff Wahl the parties will be referred to as in the court below was granted Patent No. 3,173,583 on a "bin activator," a device which attaches to the bottoms of storage bins or hoppers and by imparting vibrations to the hoppers or bins, facilitates the flow of powdered, granular, pulverized or like material out of the bins or hoppers.

On November 1, 1965, plaintiffs commenced an action against Carrier Manufacturing Co., Inc. in the United States District Court for the Southern District of Indiana, alleging infringement of that patent. Trial of the case commenced on November 6, 1967, and continued through November 14, 1967, when it was adjourned until August 19, 1968, to enable the plaintiffs to prepare rebuttal to the proofs offered by the defendant. Such proofs were offered on August 19, 1968. On November 5, 1969, United States District Judge William E. Steckler, Chief Judge of the Southern District of Indiana, entered judgment for the defendant, after concluding that the patent in suit was invalid. The judgment of the District Court was affirmed, Wahl v. Carrier Mfg. Co., 452 F.2d 96 (7th Cir. 1971), and the application for certiorari was denied, 405 U.S. 990, 92 S.Ct. 1255, 31 L.Ed.2d 457 (1972). On December 18, 1970, after judgment of invalidity had been entered in the District Court for the Southern District of Indiana, the present suit for infringement of the same patent was filed in the United States District Court for the Western District of Kentucky. The defendant filed a timely answer claiming invalidity and lack of infringement, and on December 21, 1971, amended its answer to include a claim that the plaintiffs were estopped from suing for infringement by the prior Indiana judgment of invalidity.

Subsequently, defendant filed a motion for summary judgment based upon the same claim of estoppel. The claim of estoppel relies upon the doctrine announced by the Supreme Court in Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971). In support of its motion for summary judgment, based upon estoppel, the defendant attached a copy of the transcript (1,300 pages) and record of the litigation in the United States District Court for the Southern District of Indiana, and a certified copy of the 600-page appendix, filed in the United States Court of Appeals for the Seventh Circuit. Plaintiffs filed nothing in opposition to the motion for summary judgment except a reply which alleged various deficiencies and errors in the Indiana litigation, which plaintiff claimed made the application of the Blonder-Tongue doctrine inappropriate.

The District Judge examined the transcript and record of the Indiana litigation and granted the motion for summary judgment. From that action this appeal is taken.

In this Court plaintiffs claim to be entitled to a trial to determine whether there were deficiencies in the prior Indiana litigation which would remove the instant case from the application of the doctrine enunciated in Blonder-Tongue. At the outset we point out that plaintiffs' entire reliance is on the pleadings and that nothing in support of such pleadings has ever been filed. Rule 56(e), Rules of Civil Procedure, provides in part:

"When a motion for summary judgment is made and supported as provided in this rule, an adverse party may not rest upon the mere allegations or denials of his pleading, but his response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial. If he does not so respond, summary judgment, if appropriate, shall be entered against him."

Plaintiffs not only did not respond by affidavit or otherwise to the defendant's motion for summary judgment in any manner contemplated by Rule 56(e), but filed only a reply which does not "set forth specific facts showing that there is a genuine issue for trial," as required by Rule 56(e). We are, therefore, only concerned with one issue: Was summary judgment appropriate under the circumstances of this case?

In Triplett v. Lowell, 297 U.S. 638, 56 S.Ct. 645, 80 L.Ed. 949 (1936), in discussing estoppel in patent litigation, the Supreme Court said at page 644, 56 S.Ct. at page 648:

"We conclude that neither the rules of the common law applicable to successive litigations concerning the same subject matter, nor the disclaimer statute, precludes relitigation of the validity of a patent claim previously held invalid in a suit against a different defendant."

In discussing the Triplett rule in Blonder-Tongue, the Supreme Court said:

"Thus, we conclude that Triplett should be overruled to the extent it forecloses a plea of estoppel by one facing a charge of infringement of a patent that has once been declared invalid." 402 U.S. at 350, 91 S.Ct. at 1453.

The Court, however, made it clear that mere prior adjudication of invalidity in and of itself would not necessarily require a termination of a subsequent lawsuit between different parties. In that connection the Court stated:

"Moreover, we do not suggest, without legislative guidance, that a plea of estoppel by an infringement or royalty suit defendant must automatically be accepted once the defendant in support of his plea identifies the issue in suit as the identical question finally decided against the patentee or one of his privies in previous litigation. Rather, the patentee-plaintiff must be permitted to demonstrate, if he can, that he did not have `a fair opportunity procedurally, substantively and evidentially to pursue his claim the first time.\' Eisel v. Columbia Packing Co., 181 F.Supp. 298, 301 (Mass. 1960). This element in the estoppel decision will comprehend, we believe, the important concerns about the complexity of patent litigation and the posited hazard that the prior proceedings were seriously defective.

Determining whether a patentee has had a full and fair chance to litigate the validity of his patent in an earlier case is of necessity not a simple matter. In addition to the considerations of choice of forum and incentive to litigate mentioned above, certain other factors immediately emerge. For example, if the issue is nonobviousness, appropriate inquiries would be whether the first validity determination purported to employ the standards announced in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 supra; whether the opinions filed by the District Court and the reviewing court, if any, indicate that the prior case was one of those relatively rare instances where the courts wholly failed to grasp the technical subject matter and issues in suit; and whether without fault of his own the patentee was deprived of crucial evidence or witnesses in the first litigation. But as so often is the case, no one set of facts, no one collection of words or phrases, will provide an automatic formula for proper rulings on estoppel pleas. In the end, decision will necessarily rest on the trial courts\' sense of justice and equity." 402 U.S. at 332-334, 91 S.Ct. at 1444 (footnotes omitted).

Boutell v. Volk, 449 F.2d 673, 678 (10th Cir. 1971) the test was summarized as follows:

"Blonder-Tongue . . . simply held that adjudication of invalidity of a patent following a full and fair hearing in which the defender of the patent had an adequate opportunity to present his case in support of validity would be final."

It is apparent from these quotations that there must be something more than proof of existence of prior litigation of the same patent, resulting in an adjudication of infringement, before a patentee may be foreclosed from trial of a subsequent action involving the same patent. Under the principles announced, necessarily, there must be a balancing of the equities on a case by case basis.

Plaintiffs' first contention is that the District Court for the Southern District of Indiana, the Court of Appeals for the Seventh Circuit, and, by implication, the Supreme Court of the United States, when it denied certiorari, "wholly failed to grasp the technical matter and issues in suit." In the brief in this Court the plaintiffs state:

"Those courts held plaintiffs\' patent `anticipated\' by prior art dealing with feeder mechanisms; plaintiffs stand ready to prove the courts\' misconception of the technical subject matter by proving that feeder mechanisms are machines radically different in structure, operation, and function from the bin activators to which plaintiffs\' patent is actually directed. The District Court in this case, however, gave plaintiffs no chance to offer such proof; instead, by a process of reasoning wholly unrevealed, it held (App. 30) that the trial judge in the Carrier case made his conclusions of fact `with an intelligent understanding of the technical issues involved\'." Plaintiffs\' brief, p. 10.

Nothing is offered in support of this claim and the same issues were presented and disposed of in the appeal to the Seventh Circuit. Similarly, it was claimed in the Seventh Circuit that Judge Steckler did not understand the invention. In disposing of that claim the Court of Appeals for the Seventh Circuit had the following to...