Petition for Writ of Certiorari — University of Illinois Foundation v. Blonder-Tongue Laboratories, Inc.

a ¢ rite CUrr a °

Pre) a Tycer re Ore i - - oe

a § 24 1972

IN THE

Supreme Court of the GQnited

Octoser TERM, 1972.

CDLK JR CLER

No 1 27626

A

UNIVERSITY OF ILLINOIS FOUNDATION,

’ Petitioner,

, rs.

"a BLONDER-TONGUE LABORATORIES, INC.,

re Respondent.

is

» PETITION FOR WRIT OF CERTIORARI TO THE

_ _.._UNITED STATES COURT OF APPEALS FOR

” . THE SEVENTH CIRCUIT AND APPENDIX.

) S

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{

(‘HARLES J. MERRIAM,

> Wituiam A. MarsHa.t,

MicuHakEu P. Buck1o,

é Two First National Plaza,

Chicago, Illinois 60670,

Attorneys for Petitioner.

p Of Counsel:

) Merriam, MarsHati, Suarino,

& Kose,

Suite 2100,

& Two First National Plaza,

3 Chicago, Illinois 60670.

i

October ...., 1972.

THE GUNTHORP-WARRER PRINTING COMPANY, CHICAGO

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TABLE OF CONTENTS.

Petition CoNnrTENTS.

PAGE

i Kika cheek idaehuntnerseewenk cues 1

i Cini atceneetehinhe vnkansacsesss 2

EE pep acesinceercncewescavsenenss 2

OD ac ocrcceccnetbnsanevauceens 2

Reasons for Granting the Writ .................... 4

Dir eUdeheth awed ab6c bb ee saan ne eaneee 9

APPENDIX CoNTENTs.

Decision of the Court of Appeals for the Seventh Cir-

cuit from Which Review Is Sought, July 25, 1972.. Al

Decision of the United States District Court for the

Northern District of Illinois, September 27, 1971... A3

Unreported Decision of the United States District

Court for the Northern District of Illinois, June 27,

to RPRREERERS SAPD ARCs en OR All

TaBLe oF CITATIONS.

Cases.

Black, Sivals & Bryson, Ine. v. National Tank Co., 445.

Sy ee ee edi vince anttrceeoscess - §

Blonder-Tongue Labs., Inc. v. University of Ill. Found-

ation, 402 U. S. 313 (1971) .......... 2, 3, 4, 5, 6, 7, 8, 9

Blumeraft of Pittsburg v. Architectural Art Mfg.,

Inc., 337 F. Supp. 853 (D. Kan. 1972) ............ 5

2

x

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Fs

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4

3%

x

5

has bbe toa oa

aN nn 00

il

Blumcraft of Pittsburg v. Kawneer Co., 341 F. Supp.

gs ae ee ererrrresT Prerr rer eter 7

Flood v. Kuhn, 32 L. Ed. 2d 728 (1972) ............ 9

Graham v. John Deere Co., 383 U. S. 1 (1966) ....2,5, 6,7

Triplett v. Lowell, 297 U. S. 638 (1936) ............ 3, 4,8

University of Ili. Foundation v. Winegard Co., 402 F.

ee Se PPrreerrrer rere rere ee 3, 6,7

Woodstream Corp. v. Herter’s, Inc., 446 F. 2d 1143

(8th Cir. 1971)

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PARALLELS SOL SET EET OEY Ea OIE I NETHER —

IN THE

Supreme Court of the Gnited States

Octoser Term, 1972.

A cieeuiuis

UNIVERSITY OF ILLINOIS FOUNDATION,

Petitioner,

vs.

BLONDER-TONGUE LABORATORIES, INC.,

Respondent.

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS FOR

THE SEVENTH CIRCUIT AND APPENDIX.

Petitioner prays that a writ of certiorari issue to review

the decision of the United States Court of Appeals for the

Seventh Circuit, entered July 25, 1972.

OPINIONS BELOW.

The opinion of the Seventh Circuit with respect to which

review is sought is reported at ......... se Oe en , 175 U. S.

P. Q. 1 (7th Cir. 1972). It is also printed in the Appendix

hereto at Al.

The district court’s decision from which the appeal was

taken is reported at 334 F. Supp. 47 (N. D. Ill. 1971). It

is also printed in the Appendix hereto at A3.

pee ees

7

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> oy aed

Sh Gees CES Sa ee

2

JURISDICTION.

Jurisdiction is based on 28 U. S. C. § 1254(1). The deci-

sion of the Court of Appeals, affirming the judgment of the

district court, from which review is sought, was entered

July 25, 1972.

QUESTIONS PRESENTED.

1. Did this Court, in previously remanding this case

to the district court to allow Blonder-Tongue to amend

its pleadings to assert a plea of estoppel (402 U. S. 313),

intend to give discretion to the lower courts to decide the

merits of the estoppel plea on all of the circumstances

involved in the case, including the standard of patentability

applied by the Eighth Circuit in its prior finding of patent

invalidity?

2. If so, did the district court and the court of appeals

exercise such discretion in holding they were barred from

following their prior decisions that the patent in question

was valid and from examining whether the Eighth Circuit,

in holding the same patent invalid, had properly applied the

standard of patentability laid down by this Court in

Graham vy. John Deere Co., 383 U. S. 1 (1966)?

3. Has this Court’s requirement of ‘‘justice and equity”’

been met considering all the circumstances, and specifically

the fact that the University of Illinois Foundation, a char-

itable organization, was permitted by Blonder-Tongue to

spend thousands of dollars in litigating this matter with-

out any claim of collateral estoppel by Blonder-Tongue

until its rebuttal argument in this Court?

STATEMENT OF THE CASE.

Petitioner, University of Illinois Foundation (Founda-

tion), filed suit in the Northern District of Illinois against

respondent, Blonder-Tongue Laboratories, Inc. (Blonder-

p

Tongue), on March 29, 1966, charging infringement of

U.S. Patent No. 3,219,767 (the Isbell patent).* On June 27,

1968, the district court entered judgment holding the patent

valid and infringed.** On February 13, 1970, the Court of

Appeals for the Seventh Circuit affirmed. (422 F. 2d 769.)

Blonder-Tongue sought certiorari and its petition was

granted on October 19, 1970. (400 U. S. 864.) Apart from

the questions presented by Blonder-Tongue, this Court

requested sua sponte that the parties brief the question

whether the holding in Triplett v. Lowell, 297 U. S. 638

(1936), should be adhered to.

On May 3, 1971, this Court rendered its decision in

Blonder-Tongue Labs., Inc. v. University of Ill. Founda-

tion, 402 U. S. 313 (1917) (hereinafter Blonder-Tongue).

The Court modified the holding in Triplett and remanded

the case to the district court to permit Blonder-Tongue

to assert (and the Foundation to contest) ‘‘a plea of

estoppel’’. This Court expressed ‘‘no views on the other

issues presented’’. (402 U. S. 350.)

Blonder-Tongue subsequently amended its answer to as-

sert the affirmative defense of collateral estoppel. The

defense was founded on the prior decision of the district

court for the Southern District of Iowa, decided June 23,

1967 (271 F. Supp. 412), affirmed by the Court of Appeals

for the Eighth Circuit on September 30, 1968 (402 F. 2d

125), in University of Illinois Foundation v. Winegard Co.

(hereinafter Winegard), which had held certain claims

of the Isbell patent invalid.

Both parties moved for judgment without taking addi-

tional testimony or presenting additional evidence. On

September 27, 1971, Judge Hoffman entered judgment

holding the Foundation estopped from enforcing the Isbell

* Another patent and other issues were also involved eventually,

but they do not relate to this petition.

** This decision is not reported. It is printed in the Appendix

hereto at All.

4

patent. (334 F. Supp. 47; A3.) The Court of Appeals

for the Seventh Circuit affirmed the district court’s deci-

sion on July 25, 1972. (175 U. S. P. Q 1; Al.) This

petition followed in due course.

REASONS FOR GRANTING THE WRIT.

Question No. 1.

This Court did not intend by its decision in Blonder-

Tongue that a defense plea of estoppel based upon a prior

final adjudication of patent invalidity constituted a conclu-

sive estoppel tantamount to a plea in bar. The effect of its

decision was simply to modify the 35 year old precedent

established by Triplett v. Lowell, 297 U. S. 638 (1936), and

allow a plea of estoppel to be asserted in an infringement

action against a patentee whose patent had previously

been held invalid. This Court made clear the procedure

that was to be followed after such a plea is asserted, viz.:

‘“‘TW]e do not suggest ... that a plea of estoppel

by an infringement . . . suit defendant must auto-

matically 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 paten-

tee-plaintiff must be permitted to demonstrate, if he

can, that he did not have ‘a fair opportunity pro-

cedurally, substantively and evidentially to pursue his

claim the first time.’

‘‘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

5

is nonobviousness, appropriate inquiries would be

whether the first validity determination purported to

employ the standards announced in Graham v. John

Deere ...’’ (402 U. S. at 332-33). (Emphasis added.)

Such a determination is to be made ‘‘on a pretrial motion

for judgment on the pleadings or summary judgment’’..

(402 U. S. at 348) in order to achieve the objective of this

Court of avoiding unnecessary litigation.

Independent inquiry and the exercise of judicial dis-

cretion by the second forum to determine the existence

of procedural, substantive, or evidential defects in the prior

decision of invalidity was ile intention of this Court.

Courts of other jurisdictions are in agreement regarding

the right of the second court, in its discretion, to consider

all the facts including a consideration of the ‘‘reasoning’’

of the court that made the prior adjudication of invalidity.

For example, Judge Doyle of the Tenth Circuit has inter-

preted Blonder-Tongue as allowing the patentee to ‘‘col-

laterally’’ attack the prior proceedings. Black, Sivals &

Bryson, Inc. v. National Tank Co., 445 F. 2d 922, 926

(Fn. 2) (10th Cir. 1971). Likewise, the court in Blumcraft

of Pittsburg v. Architectural Art Mfg., Inc., 337 F. Supp.

853, 858 (D. Kan. 1972), examined the prior court’s ‘‘famili-

arity with and application of the standards announced in

Graham v. John Deere .. . to the evidence in the case.’’

(Emphasis added.) Such a use of discretion is necessary

to allay this Court’s ‘‘important concerns about the com-

plexity of patent litigation and the posited hazard that the

prior proceedings were seriously defective’? (402 U. S. at

333).

Accordingly, the answer to Question 1 should be in the

affirmative.

ee er

Question No. 2.

Both the district court and the Seventh Circuit Court

of Appeals refused to exercise judicial discretion in con-

sidering the effect of the Winegard decision. In affirming

the decision of Judge Hoffman that the Foundation is

estopped from asserting the validity of the Isbell patent,

the Seventh Circuit held: ‘‘Review by the court which

considers the plea of collateral estoppel of the reasoning

of the court which made the prior adjudication would be

inconsistent with the doctrine of collateral estoppel”.

(A2.) This ruling by the Seventh Circuit is not only

in direct conflict with the reasoning of this Court’s deci-

sion in Blonder-Tongue remanding the case to the district

court, but is contrary to the clear language of that deci-

sion which, as pointed out above, establishes the procedure

which a court must follow in considering a plea of estoppel.

If this Court's holding that the patentee must be permit-

ted to demonstrate that the first validity determination

did not purport to employ the Graham standards of ob-

viousness is to have any meaning at all, it follows ipso

factu that the reviewing court must consider the ‘‘reason-

ing’’ of the court that made the prior arenas of

invalidity.

The reluctance to review the ‘‘reasoning’’ presented no

impediment to the district court or the Seventh Circuit

Court of Appeals in their original decisions which found

the patent here in suit valid, despite earlier decisions to the

contrary by the respective brother courts of concurrent jur-

isdiction in the Eighth Circuit.*

*That the Winegard decision was based on an improper standard

of invention is evidenced by the Eighth Circuit's decision in

Woodstream Corp. v. Herter’s, Inc., 446 F. 2d 1143 (8th Cir. 1971),

wherein, subsequent to and in partial reliance on the impact of

7

On the remand before the district court, the Foundation

did not urge a relitigation of the facts of this case but,

rather, argued, inter alia, that it did not have ‘‘a fair

opportunity—substantively—to pursue [its] claim the first

time’’ because the Eighth Circuit in Winegard failed to

apply the correct standard of invention to the evidence.

However, both the district court and the Seventh Circuit

Court of Appeals refused to review the application of the

Graham standards by the Eighth Circuit. The district

court skirted this issue by considering that the substantive

fair opportunity requirement was met solely by finding

that the district court in Winegard understood the tech-

nical subject matter. The Court of Appeals erroneously

ignored the issue on the grounds that such a review ‘‘would

be inconsistent with the doctrine of collateral estoppel’’

enunciated by this Court in Blonder-Tongue.* (A2.)

If the Seventh Circuit’s theory of unilateral estoppel

is not corrected, the current practice for sustaining good

patents and rectifying erroneous holdings by the grant of

certiorari arising from a conflict in appellate court deci-

sions will be abolished. This will effectively provide in

rem invalidity, a result specifically eschewed by this Court

(402 U. S. at 332-33).

It is submitted that the Seventh Circuit misconstrued this

Court's holding in Blonder-Tongue and that this case pre-

this Court's reasoning in Blonder-Tonguc, the Eighth Circuit

appears to have abandoned the erroneous criteria of patentability

enunciated in Winegard. In short, the “‘reasoning’’ which the

Seventh Circuit was reluctant to examine has not even been fol-

lowed by the Eighth Circuit itself.

* The district court in Blumcraft of Pittsburgh v. Kawneer

Co, 341 F. Supp. Wis (N. D. Ga. 1971), has also adopted

a similar erroneous position concerning the scope of review.

In that case the court stated: ‘‘This mandate of the Supreme

Court does not extend so far as to give this court authority

to sit as an appellate court to determine if the Court of Appeals

for the Fourth Circuit committed reversible error because it

allegedly ignored certain findings of fact made by the lower

court’’. (341 F. Supp. at 1020).

sents an ideal vehicle by which the Court may clarify the

proper scope of review by a federal district court in ap-

plying the defense of collateral estoppel consistent with

the principles set forth in Blonder-Tongue.

Question No. 3.

After outlining the requirements that must be met in

determining whether the plaintiff-patentee had a fair op-

portunity to litigate its patent, this Court mitigated the

strict burden by concluding that ‘‘In the end, decision will

necessarily rest on the trial court’s sense of justice and

equity’’ (402 U. S. at 334).

Where has this standard been applied in this case?

Nowhere is it shown that Foundation was accorded this

consideration. Foundation, a charitable organization, re-

lying upon the then well established and long standing

Triplett* doctrine, spent thousands of dollars in relitigat-

ing the issue of validity of the I<bell patent without any

plea of estoppel being raised by defendant until during

oral rebuttal argument before this Court, and then only

at the urging of this Court (402 U.S. at 319-20). Blonder-

Tongue stated that it was at that point suggesting a

**modification’’ of Triplett.

This Court’s ultimate decision in Blonder-Tongue left

unanswered the question of validity raised by the con-

flicting decisions on validity by two different appellate

courts appearing in the petition as originally filed. Be-

cause of the retroactive application of this Court’s estoppel

decision without a final decision on the ultimate issues

relating to patent validity, Foundation was forced to begin

its upstream swim anew. Even profit making baseball

teams are not placed in this expensive and inequitable

~ © Triplett v. Lowell, 297 U. 8. 638 (1936).

,

dilemma by this Court. Cf., Flood v. Kuhn, 32 L. Ed.

2d 728, 744 (1972).

| Somewhere along the line in this case the clarion call

of justice and equity ax a guiding voice, if heard, was

ignored by the Seventh Circuit in its decision on remand.

This error should be corrected by this Court by remanding

with appropriate instructions.

The Seventh Circuit has read into this Court’s deci-

sion in Blonder-Tonque a mandate that does not exist.

In view of the far reaching effect of that decision, there

is a duty to avoid misinterpretation by clarification and

explanation of the decision. This can only be achieved by

the granting of this petition.

Respectfully submitted,

Cuartes J. Merriam,

Wruiam A. Marsnatz,

Micuaex P. Brexi,

Attorney for Petitioner,

University of Illinois

Foundation.

Of Counsel:

Merriam, Marspa.t, Sxaptro,

& Kose,

Suite 2100,

Two First National Plaza,

Chicago, Illinois 60670.

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APPENDIX.

In THe Unitep States Court or APPEALS

For the Seventh Circuit

September Term, 1971 April Session, 1972

No. 71-1879 ) Appeal from the

United States Dis-

7 = 7 7

University or ILuinois Founpation, trict Court for the

Plaintif-Appellant,| Northern District

of Illinois, Eastern

vs. Division.

BLonpver-Toncve LasoraTorigs, 66 C 567

Inc., Julius J. Hoffman,

Defendant-A ppellee. | Judge.

Argued May 16, 1972—Decided July 25, 1972

Before Durry and Caste, Senior Circuit Judges, and

Faircninp, Circuit Judge.

Per Curiam. This is an appeal from a judgment, on

remand from the Supreme Court, that plaintiff patent

owner is estopped, by a prior adjudication of invalidity,

from asserting the validity of its patent in this action.

The decision of the district court is reported,’ and sets

forth the history of this litigation and the reasons, con-

1. University of Ill. Found. v. Blonder-Tongue Lab., Inc., 334

F. Supp. 47 (N. D. Ill., 1971).

ee ee er

A2

sistent with the decision of the Supreme Court, for sus-

taining the defense of collateral estoppel.

We adopt the opinion of the district court, adding the

following comments:

On oral argument on appeal, plaintiff stressed its claim

that although the courts which decided Winegard purported

to employ Graham standards in deciding the subject mat-

ter was obvious, they did so defectively. The defect was

said to be reliance upon the proposition that the results

achieved by Isbell, though unpredictable, were achieved

by logical exploration within known principles. Review by

the court which considers the plea of collateral estoppel of

the reasoning of the court which made the prior adjudica-

tion would be inconsistent with the doctrine of collateral

estoppel. There can be no question but that the Winegard

courts did ‘‘grasp the technical subject matter and issues

in suit.” Even if those courts erred in the reasoning

challenged by plaintiff, we are confident that such error

would not be a defect of the magnitude contemplated by

the Supreme Court as a reason why the court in the second

action should deny the effect of estoppel to the earlier

judgment.

Recent decisions of other courts are consistent with the

decision of the district court in this case.*

The judgment appealed from is affirmed.

2. Blonder-Tongue v. University of Illinois Foundation, 402

U. 8. 313 (1971).

3. Bourns, Inc. et al. vy. Allen Bradicy Co.. et al. No. 70 © 1992.

N. D. Til. (Feb. 7, 1972) ; Blumeraft of Pittsburgh v. Architectural

Art Mfg., Inc., 337 F. Supp. 853 (D. Kansas, 1972).

A3

Unirep States District Court,

N. D. Illinois, E. D.

Sept. 27, 1971.

No. 66 C 567.

The University or Iuuinois Founpation,

Plaintiff and Counterclaim Defendant,

vs.

Buonper-Toncve Lasoratorigs, Inc.,

Defendant and Counterclaimant,

vs.

JFD Exectronics Corporation,

Counterclaim Defendant.

MEMORANDUM OF DECISION

Jvuuus J. Horrman, District Judge.

The action is presently before the Court pursuant to the

mandate of the United States Supreme Court, vacating

the judgment of the Court of Appeals which had affirmed

the judgment here. It is the opinion of this Court that this

mandate requires the entry of final judgment for defendant

on the plaintiff’s claim.

ee Ree ee

aa ade

8 es tie A hentai ed

A4

Upon the original trial of this case, this Court concluded

that Patent 3,210,767, issued to Isbell and held upon assign-

ment by the plaintiff, The University of Illinois Foundation,

was valid and infringed by the defendant, Blonder-Tongue

Laboratories, Inc. In sustaining the patent’s validity, this

Court disagreed with the conclusion reached by the United

States District Court for the Southern District of Iowa, in

a suit filed later but tried earlier than this action, involving

the same plaintiff but a different defendant. University of

Illinois Foundation v. Winegard, 271 F. Supp. 412 (S. D.

Iowa 1967).

Under then settled law, this Court was bound to make its

own independent determination of the issues, on the evi-

dence and argument presented, and the prior adjudication

involving a different defendant had no preclusive effect.

The controlling precedent, Triplett v. Lowell, 297 U. S. 638,

56 S. Ct. 645, 80 L. Ed. 949 (1936), laid down the require-

ment of mutuality of estoppel: since the plaintiff could

have gained no advantage over this defendant by a victory

over the previous defendant, it was thought that fairness

required that he should suffer no prejudice from a loss

against the previous defendant. This requirement of mu-

tuality was conceded by all parties here, and was uncon-

tested in this Court.

The requirement of mutuality remained unquestioned and

unassailed in defendant’s appeal to the Court of Appeals

for the Seventh Circuit, although in the interim the judg-

ment of the Iowa District Court holding the patent invalid,

had been affirmed upon appeal by the Eighth Cireuit. Uni-

versity of Illinois Foundation v. Winegard, 402 F. 2d 125

(8th Cir. 1968). Free to exercise its own judgment under

the mutuality requirement, the Seventh Circuit affirmed this

Court’s holding that the patent was valid. University of

Illinois Foundation v. Blonder-Tongue Laboratories, 422 F.

2d 769 (7th Cir. 1970).

&

A5

With this conflict among the Circuits, the Supreme Court

granted certiorari to review the decision of the Seventh

Circuit, but denied the plaintiff’s petition for review of the

Eighth Circuit’s decision. 394 U. 8. 917, 89 S. Ct. 1191, 22

L. Ed. 2d 452 (1969). In addition to the issues raised by

the granted petition, the Supreme Court requested the par-

ties to address themselves to the question whether the doc-

trine of mutuality of estoppel, as announced in Triplett v.

Lowell, supra, should be adhered to. The United States, as

amicus curiae, joined the defendant in urging modification

or qualification of the mutuality requirement, and the Court

ultimately handed down its opinion rejecting the mutuality

requirement of Triplett as a condition to any estoppel from

prior patent litigation. 402 U. S. 313, 91 S. Ct. 1434, 28

L. Ed. 2d 788 (1971). The Court accordingly reversed and

remanded the case to allow defendant to interpose a plea of

estoppel based on the Eighth Circuit’s decision in Wine-

gard. Upon remand, defendant has accepted the invitation

by moving to amend its answer to set up this newly author-

ized defense. Allowance of the amendment is dictated by

the Supreme Court mandate, and plaintiff has not indicated

any opposition. The motion is accordingly granted.

Conceding this ruling, plaintiff has filed its motion in the

nature of a motion for judgment on the pleadings, seeking

the re-affirmation of the original judgment on the ground

that the plea of estoppel is insufficient in the circumstances

of this case. Defendant has countered with its own motion

for the entry of judgment in its favor, asserting that the

Winegard litigation is a complete defense to this suit. Both

parties have disavowed interest in offering evidence on the

issue, and no factual issues are presented by the opposing

motions. Thus the matter may be appropriately treated as

a motion for summary judgment on the defense.

The Supreme Court’s ruling breaks new ground. The

defense of estoppel, made available by abolition of the

A6

mutuality requirement, means that a prior holding that

plaintiff’s patent is invalid rises above the level of a mere

precedent, entitled only to deference within the conven-

tions of stare decisis. On the other hand, the new defense

falls short of the vigorous doctrine of res judicata which

would raise an absolute bar if the plaintiff were suing the

same defendant a second time on the same cause of action.

When a new defendant is sued, the plaintiff will be entitled

to relitigate the validity of his patent if he can demonstrate

that the prior action did not afford him ‘‘a full and fair

chance”’ to litigate the issue. 402 U. S. 333, 91 S. Ct. 1434.

Among the components of this standard are the con-

venience of the previous forum, plaintiff’s incentive to

litigate in the prior action, the identity of the issues

raised and decided, and the plaintiff’s opportunity to pre-

sent all crucial evidence and witnesses. 402 U. S. 333, 91

S. Ct. 1434. Plaintiff in this Court has made no showing

of any shortcomings in the Winegard proceedings in any

of these respects. Procedurally, at least, plaintiff had a

fair opportunity to pursue his claim the first time.

In patent litigation, however, the defense of estop-

pel is not established by procedural fairness alone. There

is a substantive element as well. Under the Supreme

Court’s formulation, when validity depends upon non-

obviousness of the development, as in the case at bar, the

second court is called upon to inquire whether the first

court ‘‘purported to employ the standards announced in

Graham v. John Deere Co., supra [383 U. S. 1, 86 S. Ct.

684, 15 L. Ed. 2d 545 (1966), and] 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. * * *’’? 402 U.S.

333, 91 S. Ct. 1445.

A7

Plaintiff asserts that the courts of the Eighth Circuit

‘‘wholly failed to grasp the technical subject matter’’

since they disagreed with the courts of this Circuit. It

would demand arrogance so to conclude. In opening the

defense of estoppel from third-party litigation, the Su-

preme Court sought to climinate the expense, waste, and

confusion caused by repetitive litigation of the validity of

the same patent. This goal cannot be achieved if mere

disagreement in the second court supervenes the defense.

It follows that the second court must defer unless it ap-

pears from the face of the prior opinions that the first

court completely missed the point. No such conclusion is

warranted here. While the technical subject matter in-

volved in the litigation is complex, the Eighth Circuit

opinion reveals a conscientious effort to apply the stand-

ards laid down in Graham v. John Deere Co., supra, and

a careful evaluation of the issues. That court concluded

that the patent was obvious and invalid as a mere combina-

tion of known elements. This Court had reached a different

conclusion on the same issue, and this Court’s opinion was

before the Eighth Circuit. A mere difference in the con-

clusions reached in the application of a general standard

such as obviousness under Section 103 of Title 35, United

States Code, does not demonstrate that either court

‘‘wholly failed to grasp the technical subject matter.’’

As anticipated by the Supreme Court, instances warrant-

ing such a conclusion will be rare. 402 U. S. 333, 91 S. Ct.

1434.

Under the factors mentioned by the Supreme Court,

plaintiff has failed to make the requisite showing to escape

the defense of estoppel and to entitle it to the benefit of

relitigation. Beyond those factors, however, plaintiff urges

that allowance of the defense would be unjust and inequita-

ble heeause it has already incurred the costs and burdens

of the second litigation, because this action was filed—

*

7.

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A8

but not decided—before the Winegard suit, because the

Supreme Court denied certiorari to review the Eighth

Cireuit’s decision, and because defendant did not plead

the defense of estoppel, or urge its availability, in the

courts of this Circuit. All these circumstances were before

the Supreme Court, and with this record before it that

Court directed that defendant be given an opportunity in

this Court to raise the defense. This Court cannot evade

the mandate by holding that such factors defeat the plea.

Finally, plaintiff asserts that the Winegard decision

is not dispositive because plaintiff did not allege in that

ease the infringement of claims numbered 6, 7, and 8

of the Isbell patent. The defendant in that case, however,

put the whole patent in issue by praying for a decree

adjudging the patent to be null and void, and the District

Court and Court of Appeals for the Eighth Circuit so

adjudged.

It follows that final judgment must be entered for de-

fendant upon plaintiff’s claim based upon the Isbell patent.

The Court of Appeals reversed this Court’s holding that

the Mayes’ patent was valid, and affirmed this Court’s

ruling for plaintiff and the additional counterclaim defend-

ant on defendant’s counterclaim. The Supreme Court left

those decisions undisturbed. Defendant has sought leave to

correct its counterclaim by a change of address, but does

not seek reconsideration of its disposition. Accordingly,

judgment is entered herewith in favor of defendant on the

claims presented in the complaint, and in favor of plaintiff

and the additional counterclaim defendant on the claims pre-

sented in the counterclaim.

A9

JUDGMENT ORDER ON REMAND

This cause having come on to be heard on plaintiff’s

Amended Complaint, on defendant’s Second Amended

Answer and Counterclaim, and on plaintiff’s and counter-

claim defendant’s Reply to Amended Counterclaim, and the

Court having heard the testimony of the witnesses for the

respective parties in open court and having examined the

depositions made of record, the exhibits received in evi-

dence, and the briefs of the respective parties, and the

Court having considered the opinions and orders of the

United States Court of Appeals for the Seventh Circuit

and of the United States Supreme Court rendered upon

appeal and review of this Court’s judgment heretofore

entered on June 27, 1968, and the Court having this day

filed its Memorandum of Decision,

It is hereby ordered, adjudged and decreed as follows:

1. The Judgment Order heretofore entered on June

27, 1968, is vacated.

2. The Court has jurisdiction of the parties and of the

subject matter of this action.

3. The plaintiff, The University of Illinois Foundation,

is estopped in this action to assert the validity of United

States Letters Patent No. 3,210,767.

4. United States Letters Patent, Reissue, No. 25,740

is invalid and void in law.

5. Judgment on the Amended Complaint is entered for

defendant, with prejudice.

6. The defendant is the owner of United States Letters

Patent No. 3,259,904 and all rights thereunder.

7. Claim 5 of United States Letters Patent No. 3,259,904

is invalid and void in law.

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8. The plaintiff and the counterclaim defendant, JFD

Electronics Corporation, did not commit acts of unfair

competition or acts in violation of the antitrust laws as

charged in the Counterclaim.

9. Judgment on the counterclaim filed by the defendant

is entered for the plaintiff and the counterclaim defendant

with prejudice.

10. The plaintiff shall not recover its expenses, costs

or attorneys fees.

11. The defendant shall not recover its expenses, costs

or attorneys fees.

12. The counterclaim defendant shall not recover its

expenses, costs or attorneys fees.

All

I» THe Unrrep Srates District Cover.

* * (Caption—66-C-567) °* °*

MEMORANDUM OF DECISION

Jvuvus J. Horrmax, District Judge.

The plaintiff and counterclaim defendant, The University

of Illinois Foundation (hereinafter ‘‘the Foundation’’),

brings this suit, charging the infringement of two patents,

against the defendant and counterclaimant, Blonder-Tongue

Laboratories, Inc. (hereinafter ‘*Blonder-Tongue"’). The

plaintiff is a not-for-profit corporation established under

the laws of the State of Illinois and having its place of

business in Champaign, Illinois. One of the Foundation’s

functions is to hold and administer patents covering inven-

tions developed at the University of Illinois. Blonder-

Tongue, a New Jersey corporation with its principal place

of business in Newark, New Jersey, is engaged in the manu-

facture and sale of equipment, including antennas, for the

distribution and reception of television signals. The plain-

tiff alleges that Blonder-Tongue has infringed two patents

held by the plaintiff by manufacturing and selling tele-

vision antennas embodying the inventions of these patents.

Blonder-Tongue has denied the validity of the patents in

suit and has asserted that, even if they were valid, they

have not been infringed by Blonder-Tongue. Blonder-

Tongue has also denied their enforceability. In addition,

Blonder-Tongue has brought a counterclaim against the

Foundation and JFD Electronics Corporation (hereinafter

“JFD"’), a New York corporation in the business of manu-

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facturing and selling, among other products, antennas for

use with home television receivers. The counterclaim

charges that the Foundation and JFD have been guilty of

unfair competition, antitrust violations, and infringement

of one claim of a patent held by Blonder-Tongue.

This court has jurisdiction of the cause under 28 U.S. C.

§ 1338. Blonder-Tongue, which does not have ‘‘a regular

and established place of business’ in this District, was

joined as a defendant with one of its Chicago distributors,

Allied Radio Corporation, but waived its defense of im-

proper venue and allowed Allied Radio Corporation to be

dismissed.

Blonder-Tongue’s Motion to Dismiss

Bionder-Tongue’s motion to dismiss the complaint for

failure to prove a prima facie case, which this court stated

during trial it would decide after the close of all the evi-

dence, is denied.

The Foundation's Patents

The plaintiff's patents in suit are Patent No. 3,210,767,

entitled ‘‘Frequency Independent Unidirectional An-

tennas,”’ which issued to the plaintiff on October 5, 1965,

as the assignee of Dwight FE. Isbell (hereinafter referred

to as the Ishell patent), and Reissue Patent No. 25,740,

entitled ‘‘Log Periodic Backward Wave Antenna Array,”

which issued to the plaintiff on March 9, 1965, as the as-

signee of Paul E. Mayes and Robert L. Carrel (hereinafter

referred to as the Mayes et al. patent).

The Isbell patent has been previously litigated in the

_United States District Court for the Southern District of

Iowa in Unirersity of Ilinois Feundation +. Winegard

Company, 271 F. Supp. 412 (S. D. lowa 1967). The Isbell

patent was there held invalid solely on the issue of obvious-

ness. This court is, of course, free to decide the case at

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bar on the basis of the evidence before it. Triplett v.

Lowell, 297 U. S. 638, 642 (1936). Although a patent has

been adjudged invalid in another patent infringement ac-

tion against other defendants, patent owners cannot be

deprived ‘‘of the right to show, if they can, that, as against

defendants who have not previously been in court, the pat-

ent is valid and infringed.’ Aghnides v. Holden, 227 F. 2d

949, 951 (7th Cir. 1955). On the basis of the evidence

before it, this court disagrees with the conclusion reached

in the Winegard case and finds both the Isbell patent and

the Mayes et al. patent valid and enforceable patents. It

further finds that the two patenis have been infringed

by Blonder-Tongue.

Description of the Patents

The plaintiff's patents in suit relate to antennas having

unidirectional radiation patterns essentially independent

of frequency over a wide band of frequencies. The an-

tennas covered by the patents are equally suitable for both

the reception and the transmission of radiated electro-

magnetic energy (which includes radio and television fre-

quency signals), but our primary concern is with their use

for television reception. The characteristics desired in an

antenns used for the reception of television signals are

a function cf the nature of frequency transmission. Al-

though the frequency of a transmitted wave remains es-

sentially constant as the wave moves through space, the

strength of the signal decreases with increasing distance.

An antenna is used to isolate the desired signal from inter-

fering signals which exist at the point of reception and to

make this signal available to the television receiver, via

a transmission line, in as large a magnitude as possible.

The characteristics of an antenna which measure its per-

formance are its gain, its bandwidth, its directivity, and

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its impedance. ‘‘Gain’’ is the measure of its ability to

increase the strength of an incoming signal relative to a

fixed standard ; high gain is a desired characteristic. ‘‘ Band-

width” is its capacity to receive, without adjustment, sig-

nals of different frequencies with essentially constant gain.

An antenna whose reception is essentially independent of

frequency over a wide band of frequencies is known as a

**wide-band’’ or ‘‘frequency independent*’ antenna. ‘Di-

rectivity’’ is an antenna’s ability to receive signals from

one desired direction as compared to all other directions,

Television antennas are preferably unidirectional in order

to eliminate interference with the desired signal and the

**ghost** images such interference produces. ** Impedance”

is a measure of an antenna’s ability to transfer energy to

the transmission line. An antenna’s impedance should

match as closely as possible the impedance of the trans-

mission line to prevent the formation of ‘‘ghosts.’’ In

the design of antennas, one desired characteristic is often

obtained at the expense of another. The antenna de-

signer’s goal, of course, is to achieve the bet possible

balance of the several different characteristics.

The simplest antenna which has been put to practical

use for television reception is the dipole antenna, which

consists of a pair of linear components extending from

each side of a transmission line fed in the center at the inner

ends of the linear components. Shortly after 1954, the log-

periodic principle of antenna design was developed. The

structures designed in accordance with this principle have

cyclic performance characteristics which repeat periodically

as frequency is increased. Although some log-periodic

structures have broadband characteristics, most do not.

While a log-periodie structure can readily be designed by

one using the log-periodic design principle, it cannot be

predicted whether such a structure will have broadband

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characteristics and thus operate succesfully as a log-

periodic antenna.

The invention covered by the Isbell patent was made

by Dwight E. Isbell during the course of his work at the

University of Illinois Antenna Laboratory under an Air

Force contract. Isbell’s invention is a log-periodie antenna

which contains a number of dipole elements arranged in a

substantially planar, parallel arrangement to form an an-

tenna array. The lengths of the dipoles vary from one

end of the antenna to the other in accordance with a scale

factor, a constant less than one, which is used to establish

the length of adjacent elements. The spacing between

adjacent elements also varies, preferably in the same man-

ner. The dipoles are fed from the end of the antenna

having the shortest dipoles by a twin-line feeder which

provides a phase reversal of 180 degrees between adjacent

dipoles by alternately connecting suecesive dipole halves.

The Isbell antenna provides unidirectional radiation pat-

terns of essentially constant beam width and input imped-

ance for any desired band width.

The invention covered by the Mayes et al. patent was

made by Paul E. Mayes and Robert L. Carrel during the

course of their work at the University of Illinois under the

same Air Force contract. Their antenna incorporates the

structural characteristics of the Isbell antenna, with one

modification: the dipoles in the array are inclined or V’d.

The apex formed by the V's points in the same direction

as the signal received by the antenna. The dipole element

size increases in the same direction. While the Isbell

antenna’s dipoles provide a broadband unidirectional an-

tenna with an upper frequency limit established by the

length of the shortest dipole in the antenna, the Mayes et al.

V-shaped elements permit the antenna to be operated over

much higher bands of frequency and with increased direc-

tivity, thus increasing the effective frequency range of the

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antenna and constituting an improvement over the Isbell

invention.

Patentability is dependent upon three conditions expli-

eitly set out in the federal statutes governing patents:

novelty and utility, as defined in 35 U.S. C. § 101 and § 102,

are non-obviousness, as set out in § 103. Graham v. John

Deere Co., 383 U. S. 1, 17 (1966). The defendant has

charged that the Isbell patent is invalid because it is ob-

vious, is anticipated by two earlier inventions, and was

disclosed in a printed publication more than one year prior

to the filing of the Isbell application. Blonder-Tongue also

. charges that the Mayes et al. patent is invalid because

it is obvious, was not conceived by its purported inventors

but by another, and was secured originally by a fraud upon

the Patent Office.

A. The Isbell Patent.

The § 103 condition, non-obviousness, ‘‘lends itself to

several basic factual inquiries.*’ As the Supreme Court

has stated, under § 103,

the scope and content of the prior art are to be deter-

mined ; differences between the prior art and the claims

at issue are to be ascertained; and the level of ordinary

skill in the pertinent art resolved. Against this back-

ground, the obviousness or nonobviousness of the sub-

ject matter is determined. Such secondary consider-

ations as commercial success, long felt but unsolved

needs, failure of others, ete., might be utilized to give

light to the circumstances surrounding the origin of

the subject matter sought to be patented. As indicia

of obviousness or nonobviousness, these inquiries may

have relevancy.

Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).

The primary inquiry, therefore, is the scope and content

of the prior art, the differences between that prior art

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and the claims at issue, and the level of ordinary skill

in the field. Blonder-Tongue asserts that Isbell’s invention

is obvious in view of the prior art, specifically (1) the

K. O. antenna, the Channel Master antenna K. O. model

1023; (2) the Katzin patent, No. 2,192,532; and (3) an

artide by DuHamel and Ore, entitled ‘‘Logarithmically

Periodic Antenna Designs,’’ published on March 31, 1958.

The court disagrees.

The K. O. antenna, sold commercially by Channel Master

Corporation in or about 1955, was an antenna which em-

ployed folded dipoles. Such folded dipoles differ sig-

nificantly from the straight or simple dipoles used by

Isbell. Further, there was no pattern in the K. O. an-

tenna’s dipole spacing, which first increases, then decreases,

then increases again from the back to the front of the

antenna. The use of narrow band, simple dipoles in a

log-periodic array to achieve a broadband effect was in no

way suggested by the K. O. antenna.

The Katzin patent covers an array of dipole elements

of differing size and different lengths, arranged in a side-

by-side relationship in a plane, continuously tapering in

length from one end of the antenna to the other, with

smaller spacing between shorter elements than between

longer ones. The patent does not: exhibit log-periodic

design and for this and other reasons does not suggest

the Isbell antenna.

The DuHamel and Ore article, in its own language,

“reports research on new types of broadband logarith-

mically periodic antenna structures.’’ The characteristics

of such structures were known in 1958 and the structures

ment, proves that ‘‘no theory has been established which

themselves are described. But the paper, by its own state-

even predicts the types of structures which will give fre-

quency independent operation. * * * Thus, it is felt that

a theoretical investigation of this class of antennas would

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A18

be fruitful.’’ It cannot be said that this article taught a

method for designing log-periodic antennas which would

predictably operate with frequency independence, and the

Isbell patent was not obvious after its publication.

Much evidence in the record establishes that the design

of successful log-periodic antennas was recognized by the

art itself to be unpredictable. In brief, the design of such

antennas at the time of the Isbell invention (and indeed

even now) was a challenge to the inventor. Isbell’s success

was unpredicted and, the court finds non-obvious to other

persons skilled in the art. In order to defeat a meritorious

patent it is not enough ‘‘to pick out isolated features’’

in the prior art, ‘‘combine them in one particular way with

hindsight acquired only from the patent under attack, and

then say that no invention would have been involved in

selecting those particular features and combining them in

the particular way in which the patentee did.’’ Eversharp,

Inc. v. Fisher Pen Co., Inc., 204 F. Supp. 649, 662-63 (N. D.

Til. 1961).

As for the ‘‘secondary considerations’’ of obviousness

or nonobviousness, such as ‘‘commercial success, long felt

but unsolved needs, failure of others, ete.,’’ this court’s

conclusions is bolstered still more. Dr. DuHamel, among

others, attempted to construct an antenna with the char-

acteristics exhibited by Isbell’s and failed. When apprised

of it, DuHamel was surprised to learn that such a structure

worked. There can scarcely be more convincing proof that

Isbell’s invention met a ‘‘long felt but unsolved need’’ in

the antenna industry.

Apart from raising the question of obviousness,

Blonder-Tongue challenges the validity of the Isbell patent

on other grounds. First, it claims that the invention was

not novel because it was anticipated by the K. O. antenna

and the DuHamel et al. patent, No. 3,079,602. For the

A19

reasons described above, in the court’s discussion of the

lack of obviousness, even in view of the K. O. antenna,

the court concludes that Isbell’s invention was similarly

not anticipated by the K. O. antenna. The DuHamel et al.

patent, filed March 14, 1958 and patented February 26, 1963,

also does not anticipate the Isbell patent. It teaches a

logarithmically periodic rod antenna, which is significantly

different from a log-periodic antenna consisting of a dipole

array, different enough so that DuHamel himself was aston-

ished to learn of the success of the Isbell invention.

Blonder-Tongue also charges that the Isbell antenna

was disclosed in a printed publication more than one year

prior to the filing of Isbell’s application. This question

is the last remaining challenge to the Isbell patent. The

plaintiff has conceded that the Quarterly Engineering Re-

port No. 2, the publication at issue, ‘‘would have antici-

pated Isbell’s invention if it had been published at a suf-

ficiently early date,’’ but argues that there is no com-

petent evidence that the report was in fact published

earlier than May 5, 1959. The question here is whether

the invention was ‘‘described in a printed publication . . .

more than one year prior to the date of the application

for patent,’? which would negate patentability under 35

U. S. C. § 102. The application for the Isbell patent was

filed on May 3, 1960. Hence it becomes crucial to know

the date of ‘‘publication’’ of the quarterly report, which

the plaintiff concedes describes the invention sufficiently

to come within the meaning of the statute. The plaintiff

acknowledges that the report was printed and was physi-

cally available prior to May 3, 1959, but denies that it

was ‘‘published”’ earlier than May 5, 1959, on which date

the report was mailed to those persons on the distribution

list.

The evidence which tends to support the defendant’s

position on the question of publication is the testimony of

A20

Miss Marjorie Johnson in the Winegard trial, of record in

this case by stipulation. Miss Johnson, whose formal posi-

tion with the University of Illinois in 1959 was Technical

Editor of the Electrical Engineering Research Depart-

ment, was responsible for distributing Electrical Engineer-

ing Laboratory publications, such as the quarterly reports,

As part of her duties, Miss Johnson also kept copies of such

publications in a ‘‘library’’ of sorts, where, because there

were no supervisory personnel, materials were kept in

locked cabinets and were generally obtained by request

from a member of the publications staff having a key. Miss

Johnson testified that the quarterly report involved here

was in the publications office on April 30, 1959, and was

therefore ‘‘available for distribution upon request on that

date,’’ although they were not actually distributed to per-

sons on the distribution list until May 5, 1959. If Miss

Johnson were truly a librarian and the document had been

available in a genuine library, even a very small or a highly

specialized library, this court would be compelled by the

weight of authority to hold that such availability consti-

tuted ‘‘publication’’ within the meaning of § 102. See, e.g.,

Hamilton Laboratories, Inc. v. Massengill, 111 F.2d. 584 (6th

Cir. 1940). However, the court finds the nature of the

availability of the document in this case was not sufficiently

‘*public’’ in nature to constitute the kind of publication in-

tended by the act, at least until the report was distributed

on May 5, 1959. In my view, the document had merely

arrived from the printer and had come into the possession

of the publications office on April 30, 1959, and although

there existed the rather remote possibility that a person

knowing of the report might have asked for it and obtained

a copy of it on that date, this kind of availability did not

represent ‘‘publication.’’

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B. The Mayes et al. Patent.

The defendant claims that the Mayes et al. patent is

obvious in view of Isbell’s prior work and the Carter

patent No. 1,974,387. The Mayes et al. patent represents

an improvement over the Isbell patent in that its dipoles

are inclined or V’d, permitting the antenna to be operated

over much higher bands of frequency and with increased

directivity, increasing the effective frequency range. The

dipole elements are bent forward at an angle between 50

and 150 degrees, rather than being attached perpendicu-

larly, as in the Isbell patent. The Carter patent teaches

an antenna ‘‘comprising a pair of angularly disposed

linear conductors,’’ but it can hardly be said to teach the

considerably more sophisticated Mayes et al. invention.

It must be noted here, as observed heretofore with respect

to the Isbell invention, that predictions in the field of

electronics and particularly in the field of antenna design

are undependable. There was no obvious basis for one

skilled in the art to take the isolated features shown in

the two earlier patents and to combine them as Mayes and

Carrell did. Their invention was, the court concludes not

obvious.

The two final challenges to the Mayes et al. patent are

(1) that it was not conceived by Mayes and Carrel but

by another, and (2) that it was secured by a fraud upon

the Patent Office. The first contention is based upon Dr.

Maye’s ‘‘admission’’ on cross-examination that the V-con-

struction which constitutes the only structural difference

between his patent and the Isbell patent ‘‘was suggested

to him by Mr. Turner of Wright Air Development Center.”’

But, a mere suggestion by another is not enough to constitute

anticipation sufficient to negate novelty. ‘‘The mere mental

conception of the desirability of doing something and of

the means of doing it will not amount to anticipation. An

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A22

invention is not anticipated by mere surmises or theories or

by inferences as distinguished from disclosures.’’ |

Deller’s Walker on Patents (2d ed.) §68. Turner’s sug.

gestion in this instance was not an ‘‘invention’’ and did

not anticipate the Mayes and Carrel invention. The second

contention is, in brief, that the plaintiff’s procuring of the

Mayes and Carrel patent was ‘‘effected by an entirely mis.

leading affidavit, either prepared willfully or through gross

and wanton neglect, perpetrating a fraud on the Patent

Office.’ The defendant makes the further argument that

none of the conditions required by law for the granting of

a reissue patent obtained in this case. The evidence sup.

ports neither of these charges. First, the evidence does not

show that Maves et al. misrepresented any fact to the Pat-

ent Office during the prosecution of the patent. Second,

Mayes et al. were under no obligation to disclose their

knowledge of references, c her than those which disclose

the identical invention. Wen Products, Inc. v. Portable

Electric Tools, Inc., 367 F. 2d 764, 767 (7th Cir. 1966).

In conclusion, the court finds both the Isbell and the

Mayes et al. patents valid and enforceable patents.

Infringement of the Patents.

The log-periodic antennas sold by the defendant which

are asserted to infringe the plaintiff’s patents are anten-

nas of two series. The first are in the Golden series, con-

sisting of the Golden Dart and Golden Arrow television

antennas, the former the outdoor, the latter the indoor

models. These are UHF antennas, designed to receive

television signals transmitted by channels 14 through 83,

and are charged with infringing all of the claims of the

Isbell patent. It was stipulated by the parties that if the

representative antenna, Plaintiff’s Exhibit No. 10, was

found to infringe, the other member of the series also

infringed. The second series is the Color Ranger series,

A23

consisting of the Color Ranger-3, Color Ranger-5, Color

Ranger-7, Color Ranger-10, and Color Ranger-19. These

are VHF antennas, designed to receive signals transmitted

by stations 2 through 13, and are asserted to infringe

claims 1 through 5 of the Isbell patent and all of the claims

of the Mayes et al. patent. The representative antenna is

Plaintiff’s Exhibit No. 35. It was stipulated by the parties

that if it was found to infringe, all other members of the

series also infringed.

The court finds that the Isbell patent is basic to both

series of Blonder-Tongue’s antennas. All of its claims are

infringed by the Golden series, while claims 1 through 5

are infringed by the Color Ranger series. The Color

Ranger also infringes all of the claims of the Mayes et al.

patent. The court finds that the length of the dipoles and

the spacings between adjacent dipoles in the accused

Blonder-Tongue antennas follow the log-periodic arrange-

ment disclosed and claimed in the patents in suit. Each of

the antennas contains three or more parallel dipoles which

vary progressively in length and spacing in accordance

with a substantially constant-seele factor. The scale factor

for length is literally constant in the Golden series, and

the average variation from a constant scale factor for

spacing is plus or minus 6%. In the Color Ranger series,

the seale factor is literally constant for both length and

spacing. The separation in the planar arrangement is

one-eighteenth wavelength or less for both series. Al-

though the broader the bandwidth desired, the closer an

antenna must conform to the preferred construction of the

Isbell antenna, where broadband requirements are not ex-

cessively great (and this is true for many practical appli-

cations), satisfactory operation can be obtained with an

Isbell antenna whose dipole elements are not arranged in

a strictly planar arrangement but are separated by a small

fraction of a wavelength. The Blonder-Tongue antennas’

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Foundation and JFD contains three counts. The first two

counts charge unfair competition and violations of the

antitrust laws; the third charges infringement of Blonder.

Tongue’s own patent, No. 3,259,904, issued July 5, 1966, to

Isaac S. Blonder and Abraham Schenfeld.

Unfair Competition and Antitrust Violations

Blonder-Tongue's first claim of unfair competition and

antitrust violations by the counterclaim defendants is its

charge against the advertising, campaign utilized by JFD,

as licensee under the Foundation’s patents, to sell the an-

tennas it produced pursuant to the licensing agreement.

Blonder-Tongue describes some of the language employed

in JFD advertisements as unfair, but the Court finds that

it was within the range of acecptable sales efforts and was

not so offensive ax to be characterized as “‘unfair.”’ For

example, JFD’s use of the phrase, ‘‘developed by the an-

tenna research laboratories of the University of Illinois,”

in connection with its product docs not violate this court's

notions of what is fair competition in a highly competitive

world. The fair import of this phrase ix that the JFD an-

tennas were initially developed by person< at the Univer.

sity, and the factual basix for such a statement ix not dis

tennas were adapted for home television used by JFD; this

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statement is also correct. The advertising effort repre-

sented by these statements and others like them cannot be

deemed “‘unfair.”’ See Drop Dead Co., lnc. ¥. 8. C. John

von & Son, Inc., 326 F. 2d 87, 96 (9th Cir. 1963), cert. de-

sied, 377 U.S. 907 (1964).

Likewise, the alleged ‘‘mismarking’’ of antennas and ad-

vertisements with representations of patent coverage for

the JFD antennas which Blonder-Tongue asserts was mis-

leading was not shown by the evidence to be cither de-

liberate or of damaging effect. Its effect, if any, was min-

imal. There was no convincing evidence to support the

conclusion that potential purchasers were influenced by

such markings to buy or not to buy cither JFD’s or its

competitors’ antennas, or that «uch markings were de-

liberately intended to gain an unfair advantage over JFD's

competition. 8. W. Farber, Inc. v. Texas Instruments, Inc.,

230 F. Supp. 883, 892 (D. Del. 1964), aff'd, 344 F. 2d 957

(3d Cir. 1965), cert. denied, 382 U.S. 843 (1965).

Nor was the use of the phrase ‘‘the patented log-periodic

celular formula” unfair. JFD maintain« that it referred

to the antenna itself, a log-periodic anteuna using the pat-

ented cellular concept. This ix a reasonable construction

of the phrase; the reader was not necessarily led to be-

liewe that JFD had patented the whole concept of log-

periodicity. The court's conclusion ix that JFD's advertis-

ing was not improper. The defendant is entitled neither

to an injunction to halt allegedly unfair advertising prac-

tices nor to damages resulting from a lox« of business al-

legedly attributable to such practices, since the evidence

supports neither claim.

Blonder-Tongue further contends that the counter-claim

defendants, particularily the Foundation, undertook an

unfair campaign to police its patents by numerous law-

suits and threats of litigation. It is conceded by Blonder-

ND CLOSE IN CENTER

Tongue, as it must be, that there is nothing improper is

bringing lawsuits against thove believed in good faith to be

infringers. But Blonder-Tongue’s complaint is that suits

were brought ‘‘to coerce the trade into dealing with JFD

exclusively,”’ that news releases concerning this litigation

were “‘deliberately widely circulated in the trade,”’ and

that such practices ‘‘far transcend the proper use of pat-

ents and patent litigation.’ A review of the evidence dem.

onstrates clearly that such allegations are wholly without

basis in fact. The patentee, in the belief that its patents

were valid and infringed (as they have indeed been shown

to be), had the right to protect its claims by notifying the

trade of alleged infringements. It« activities here were

not unreasonable. Al-Fab Aluminum Fabricators, Inc. +.

Wagner, 220 F. Supp. 715 (NX. D. Til. 1963). The argument

that it was improper to sue Blonder-Tongue in thix Dis

trict is irrelevant to the claim of unfair practices made

here. Blonder-Tongue might have brought timely objec

tion to the venue but chose not to do so, and this court has

not, in any case, been shown how the choice of venue has

worked to Blonder-Tongue’s competitive disadvantage.

Even if suit had been brought in Blonder-Tongue’s home

state of New Jersey, news releases describing the litigation

might have been distributed anywhere, including this Dis

trict. From the standpoint of competition, therefore, it is

immaterial that Blonder-Tongue was sued here rather than

in any other District.

The claim that the Mayes et al. patent was procured im-

properly from the Patent Office has been discussed suprs

as part of the court’« discussion of the patent's validity.

There was no evidence that its procurement constituted un-

fair competition, as charged by Blonder-Tongue.

Blonder-Tongue makes the further claim that JFD

“*raided”’ key personnel from Blonder-Tongue, and that

| AZ

this constituted an unfair competitive practice. The record

shows that several persons formerly in Blonder-Tongue’s

employ were subsequently hired by JFD and that, after the

departure of one of these, some records dealing with cus-

tomers were found to be missing. If the court were free to

speculate on the significance of this evidence, it might be

tempted to conclude, with Blonder-Tongue, that that com-

pany had been (in popular parlance) ‘‘raided’’ by JFD.

But more than mere speculation is requ'red to justify such

a conclusion. There must be proof, and such proof is lack-

ing here. Those employees later hired by JFD made up a

small fraction of the total number of employees who left

Blonder-Tongue during the same period of time, and a

number of reasons, vuch as dissatisfaction with Blonder-

Tongue, genuinely arrived at, appear from the evidence to

have been instrumental in cau=ing the employees to change

their positions. The record contains no evidence that JFD

“raided” Blonder-Tongue. Dempster Bros., Inc. v. Perfec-

tion Steel Body Co., 182 F. Supp. 307, 309 (NX. D. Ohio

1959).

Blonder-Tongue has a'so argued that JFD attempted to

force its evstomer to purchase its unpatented products as

a “tie-in” with its patented products. Proof of such a

practice would constitute, of course, an antitrust violation

as well as an unfair competitive practice. Carbice Corp. of

America v. American Patents Development Corp., 283 U.S.

27 (1931). The only evidence, however, which tends to sup-

port this argument is the testimony of a JFD official who

admitted that JFD salesmen would try to persuade their

customers to handle not only JFD antennas but its other

products as well. This is a normal business practice: all

salesmen try to sell their entire line of merchandise rather

than merely their most popular products. There was no

probative evidence here of any coercion or threats made to

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customers to force their purchase of the entire JFD line.

Only proof of such a compulsory tie-in would permit the

court to find either an unfair competitive practice or a vio.

lation of the antitrust laws, and such proof is absent in

the record.

The court concludes that JFD was not guilty of any

wrongful practices with regard to the marketing and sales

of their antennas. The role of the Foundation in the ae.

tivities characterized by Blonder-Tongue as unfair and in

violation of the antitrust laws is, on this view of the evi-

dence, immaterial. Whether the Foundation was a ‘‘mere

licensor’’ or something more than that is of no importance

sinee the accused practices are not found to be beyond the

reasonable bounds of competition.

Infringement of Blonder-Tongue’s Patent

The third count of Blonder-Tongue’s counterclaim

charges that Claim 5 of the patent held by Blonder-Tongue,

the Blonder et al. patent No. 3,259,904, has been infringed

by the counterclaim defendants. The antenna of Claim 5

comprises a pair of parallel conductors (twin booms)

spaced apart vertically in a vertical plane. Dipole ele-

ments lying in vertically-spaced horizontal planes extend

from the conductors at successive points along the lengths

of the conductors, with dipole lengths increasing gradually

from one end of the conductors to the other, the shortest

dipoles at the front end of the conductors, where terminals

connect a parallel wire transmission line to the antenna.

Rigid insulating means, maintaining the terminals spaced

apart, are connected with a strain relief or standoff for

supporting the transmission line near the front end. Fur-

ther rigid insulating means maintain the ¢énductors’ spac-

ing at a region remote from the front end. The vertical

distance between conductors is less than the distance be-

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tween successive dipole elements and less than the wave-

lengths of the frequency band of the antenna’s operation.

The court finds that Claim 5 of the Blonder-Tongue pat-

ent was obvious at the time it was made and is therefore

invalid. The alleged improvement was taught by the fol-

jowing references in the prior art:

1. Technical Report No. 52, published October 1, 1961,

entitled ‘‘Analysis and Design of the Log-Periodic An-

tenna,’’ by Robert L. Carrel;

2. the Mayes and Heslin antennas;

3. the prior art patents cited by the Patent Examiner

during prosecution of the application for the Blonder-

Tongue patent and the Kane, Wickersham et al., Valach,

Gross, Winegard, and Callaghan patents.

Claims for Attorneys’ Fees

The plaintiff and the counterclaim defendant have each

moved for an award of attorneys’ fees in their favor, based

upon their claims that the counterclaim was interposed

and prosecuted against them in bad faith. The Founda-

tion’s claim is based upon 35 U. S. C. § 285, which reads:

The court in exceptional cases may award reasonable

attorney fees to the prevailing party.

JFD’s claim is based upon ‘‘principles of equity and good

practice.’’

Both claims will be denied. The statutory provision, as

well as equity, permits such an award only where extra-

ordinary circumstances exist and it is clear to the court

that a gross injustice will be done unless such an award

is made. Sichring v. Hansen, 346 F. 2d 474 (Sth Cir.

1965), cert. denied, 382 U. S. 943. 1 do not find that

Blonder-Tongue’s counterclaim was so vexatious and so

unjustified as to make it an ‘‘exceptional case’’ within the

reed

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ambit to the statute or within the dictates of equity.

Hyster Co. v. Hunt Foods, Inc., 263 F. 2d 130, 134 (7th

Cir. 1959). Although the court has not held that the coun.

terclaim was legally proved in any respect, Blonder-Tongue

was not clearly acting in bad faith in bringing it before

this court.

This memorandum of decision will stand as the Court's

findings of fact and conclusions of law within the meaning

of Rule 52 of the Federal Rules of Civil Procedure.

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In tHe Unirep States Distaict Court

* * (Caption—66-C-567) * *

JUDGMENT ORDER

This cause having come on to be heard on plaintiff’s

Amended Complaint, on defendant’s Amended Answer and

Counterclaim, and on plaintiff’s and counterclaim defend-

ant’s Reply to Amended Counterclaim and the Court hav-

ing heard the testimony of the Witnesses for the respective

parties in open court and having examined the depositions

made of record, the exhibits received in evidence and the

briefs of the respective parties, and the Court having this

day filed its Memorandum of Decision which said Memoran-

dum of Decision stands as the Court’s Findings of Fact

and Conelusions of Law within the meaning of Rule 52 of

the Federal Rules of Civil Procedure,

It Is Hereby Ordered, Adjudged and Decreed as follows:

1. The Court has jurisdiction of the parties and of the

subject matter of this action.

2. The plaintiff, University of Illinois Foundation, is

the owner of United States Letters Patent No. 3,210,767,

and Reissue Patent No. 25,740, and all rights thereunder,

including the rights of recovery for past infringements.

3. United States Letters Patent No. 3,210,767 and Re-

issue Patent No. 25,740 are valid and subsisting at law and

enforceable.

4. The defendant, Blonder-Tongue Laboratories, Inc.,

has infringed said Patents by making or causing to be made

or sold antennas covered by the Claims of said Patents.

5. Judgment on the Amended Complaint is entered for

the plaintiff with prejudice.

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6. The defendant is the owner of United States Letters

Patent No. 3,259,904 and all rights thereunder.

7. Claim 5 of United States Letters Patent No. 3,259,904

is invalid and void in law.

8. The plaintiff and the counterclaim defendant, JFD

Electronics Corporation, did not commit acts of unfair

competition or acts in violation of the antitrust laws as

charged in the Counterclaim.

9. Judgment on the Counterclaim filed by the defendant

is entered for the plaintiff and the counterclaim defendant

with prejudice.

10. A perpetual injunction shall issue out of and under

the seal of this Court directed to the defendant, Blonder.

Tongue Laboratories, Inc., their respective officers, agents,

servants, attorneys, employees, associates and privies and

those persons in active concert and participation with them

or any of them, enjoining and restricting them and each of

them from directly or indirectly infringing United States

Letters Patent No. 3,210,767 and Reissue Patent No. 25,740

and from offering or advertising so to do, and from aiding

or abetting or in any way contributing to the infringement

of any of said Claims.

11. After this decree shall have become final, the Court

shall refer the matter to a Master, to be appointed by the

Court, to make and render an accounting as to the extent

of the manufacture and sale of infringing antennas by the

defendant, and as to the amount of damages suffered by

the plaintiff by reason of the defendant’s infringement of

United States Letters Patent No. 3,210,767 and Reissue

Patent No. 25,740; and that the plaintiff recover from the

defendant the amount of these damages.

12. The said defendant and its officers, directors, at-

torneys, servants, agents, workmen and employees are

hereby directed and required to attend before such Master,

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from time to time as required and to produce such relevant

apparatus, objects, books, documents and papers as re-

quested and to submit to examination, oral or otherwise.

13. The plaintiff shall not recover its expenses, costs

or attorneys’ fees.

14. The defendant shall not recover its expenses, costs

or attorneys’ fees.

15. The counterclaim defendant shall not recover its

expenses, costs or attorneys’ fees.

ENTER:

Jutius J. Horrmay,

United States District Judge.

Dated: June 27, 1968.

$i? ;

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