Opposition Brief — Technograph Printed Circuits, Ltd. v. Martin Marietta Corp.

INDEX

QuESTIONS PRESENTED .......ccccccccceccceccccceees f

GraTMENT OF THE CASE .....----eeeeeeeeeeeeecceees 2

ARGUMENT 2.22.00 cecece cscs cceeccecesececeeeeees 6

1. The Issue in this Litigation Concededly Is the

Identical Issue Decided in Bendix .......----- 6

9 Concurrent Findings of the Courts Below,

Fully Supported by the Reeord, Establish that

the Courts in Bendix Did Not Wholly Fail to

Grasp the Technical Subject Matter and Issues

ee a ee re re ee tee 12

3. The Allegedly Suppressed ‘Crucial Evidence’”’

in Bendix Was Neither Suppressed Nor Crucial,

as Concurrent Findings of the Courts Below

Demonstrate .........cccc cece eee ceeeeeeeees 16

4. The Decision of the British House of Lords that

a British Patent on a Different Invention was

Valid Does Not Justify Rejection of the Estop-

pel Plea Here ........-.-eeeeeeer eee eres 18

CeeCEAION 4 nc wees cece ceca ccc ccccescsececeeeses 19

TABLE OF CASES AND STATUTES CITED

tion, 402 U.S. 313 (1971) ..:......------ 2,3, 4,5, 7,

8, 12, 13, 17, 18. 19

Bourns, Ine. v. Allen Bradley Co., 178 USPQ 198 (7

Cir. 1973), Petition A 57 ........--- eee ee eee 6

California v. Taylor, 353 U.S. 553 (1957) ....------ 7

Claridge Apartments Co. v. Commissioner of Internal

Revenue, 323 U.S. 141 (1944) ......----- eee ee: 10

Lawn v. United States, 355 U.S. 339 (1958) ......-. 7

Lyon v. Bausch and Lomb Optical Co., 224 F. 2d 530

(2 Cir. 1955), certiorari denied 550 U.S. 911 (1955) 10

il Index Continued

MeCullough v. Kammerer Corp., 323 U.S. 327 (1945)

Mills & Rockley (Electronics) Limited v. Technograph

Printed Cireuits, Limited, 12 Reports of Patent,

Design and Trademark Cases 331 (1968) ........ 18

Technograph Printed Cireuits, Ltd. v. Bendix Aviation

Corp., 218 F. Supp. 1 (D. Md. 1963), affirmed 327

F. 2d 497 (4 Cir. 1964), certiorari denied 379 US.

S26 (1964) ...... cee eee eee eee eeeeeees 2, 3, 4,5, 6,7,

14, 15, 16, 17, 18,19

Technograph Printed Cireuits, Ltd. v. Martin-Marietta

Corp., 340 F. Supp. 428 (D. Md. 1972), affirmed

474 F. 2d 798 (4 Cir. 1978) ....---+- +e 3, 4.8.9, 13,

14, 15, 16.

17, 18, 19

Technograph Printed Cireuits, Ltd. v. Method Ine.,

174 USPQ 297 (N.D. Il. 1972) ...----- +--+ + i

Technograph Printed Cireuits v. Packard Bell Eleetro-

nies Corp., 290 F. Supp. 308 (C.D. Calif. 1968) .. 6

Technograph Printed Cireuits Ltd. v. United States

164 USPQ 584 (Commr., Ct. Cls. SE sevnsex 3

Triplett v. Lowell, 297 U.S. 638 (| ee :

Tyrrell v. District of Columbia, 243 U.S. 1 (1917) ..

Union Pacifie Railroad Co. v. Laramie Stock Yards

Co., 231 U.S. 190 (1918) ....---- eee reer eee 10

Virtue v. Creamery Package Mfg., 227 U.S. 8 (1913) 7

; i |) |; ne ooo 9, 10

IN THE

Supreme Court of the United States

OcToBER TERM, 1973

No. 73-147

TECHNOGRAPH PRINTED CIRCUITS, Lrp. and

TecHNocRAPH Printep Evecrronics, INc.,

Petitioners,

V.

Martin-MarteTra CorPorATION, WESTINGHOUSE

Exiectric Corporation, McDoNNELL ATRCRAFT

CorPoRATION and INTERNATIONAL ‘TELEPHONE &

TELEGRAPH CORPORATION,

Respondents.

BRIEF IN OPPOSITION TO PETITION FOR A

WRIT OF CERTIORARI

QUESTIONS PRESENTED

1. Whether a patentee-plaintiff who expressly con-

eeded below that the issue herein was the identical

issue decided against him in earlier litigation, can

assert a new and specious issue at the Supreme Court

level in a belated attempt to obtain reversal of a dis-

missal on the basis of collateral estoppel?

®. Whether the District Court and the Court of Ap-

peals in this litigation erred in finding as a fact that

)

the courts had not “wholly failed to grasp the techni-

eal subject matter and issues in suit’? in earlier liti-

gation in which the now-expired patent here in suit

was held invalid?

* Whether the Distriet Court and the Court of

Appeals in this litigation erred in finding as a_faet

that allegedly crucial new evidence was neither erueial

nor suppressed in earlier litigation in which the pat-

ent here in suit was invalid?

4. Whether the District Court and the Court of

Appeals erred in sustaining a plea of collateral es

toppel on the basis of a prior adjudication by the

same courts of patent invalidity, beeause the House

of Lords later found a British patent on a different

invention to be valid?

STATEMENT OF THE CASE

The instant actions were filed during 1962, prior to

the decision by Distriet Judge Watkins in Teehno-

graph Printed Circuits, Ltd. v. Bendix Aviation Corp.

218 F. Supp. 1 (D. Md. 1963). In that ease (here-

after Bendix), the patents there in suit were held to

be invalid as both anticipated by the prior art and as

obvious. Speeitieally, claims 4, 5, 10, 14, 15 and 16 of

Fisler Patent No. 2,706,697 (hereinafter “697) were

held invalid. The judgment of invalidity on the basis

of obviousness was affirmed per curiam 327 F. 2d 4%

(4 Cir. 1964). A petition for rehearing en bane was

filed, asserting that Bendix was the plaintiffs’ “test

ease’. That petition was denied. Petition for cer-

tiorari was thereafter denied 379 U.S. 826 (1964).

1 Blonder-Tonque Laboratorics v. University Foundation, 402

U.S. 313, 333 (1971).

SY: -

9

In the instant actions, Judge Watkins ordered

plaintiffs to show cause why judgment should not be

rendered against them and plaintiffs responded.

Thereafter, a motion to dismiss based on a plea of

collateral estoppel was filed, because of the final ad-

judication of invalidity in Bendir. That motion was

briefed and then held sub judice pending argument

and deeision by this Court in Blonder-Tongue Labora-

tories V. University Foundation (hereafter Blonder-

Tongue). The decision therein issued May 3, 1971

and appears at 402 US. 313. Tt held that, in proper

cireumstanees, a plea of collateral estoppel barred a

further trial where a patent previously had been held

invalid.

The eollateral estoppel issue was again briefed.

Plaintiffs filed a memorandum of some 66 pages, ac-

companied by a large book of attachments of assertedly

new evidenee. Defendants’ response was followed by

a 15 page reply memorandum. The District Court

fully examined into and rejected each of the plaintiffs’

arguments against application of collateral estoppel,

in an extensive opinion reported at 340 F. Supp. 423

(1972). and appearing at A 2-32 of the appendix to

the petition herein (hereinafter Petition A —). In

concluding that plaintiffs here had had a full and fair

opportunity in Bendir to try the validity of the patent

here in suit, the opinion stated:

“The ‘fair opportunity’ that plaintiffs had in

the Bendix ease involved numerous pretrial eon-

ferenees and hearings on preliminary motions all

elaborately briefed, and usually fully argued. In

addition to twenty-nine days of trial, four days

of travel were spent, at the request of counsel,

visiting plants of licensees and of Bendix. Plain-

tiffs filed 458 exhibits and defendant 543 exhibits.

4

These ineluded depositions (including that of

Eisler), file wrappers of patents in the hundreds

of pages, and pamphlets, printed publications,

patents and correspondence, amounting to thou-

sands of pages. After the last day of trial, coun-

sel were permitted to file briefs, totalling in ex-

cess of 600 pages, followed by two days of argu-

ments. Submission of new cases, references to

modifieation of plaintiffs’ licensing procedures,

and new British patent action, thereafter ex-

tended over a period of months.

“Highly experienced and efficient counsel cer-

tainly by the most exacting standards had a ‘fair

opportunity’ to develop fully their theories and

positions. The court was lenient in its rulings on

admissibility; and no claim was or is now made

that the court exeluded any relevant evidence of-

fered.”? 340 F. Supp. at 426, Petition A 6-7).

The pleas of collateral estoppel were sustained and

the actions dismissed.”

On appeal to the United States Court of Appeals

for the Fourth Cireuit, a unanimous court affirmed,

in an opinion which again considered and rejected

each of plaintiffs’ arguments against sustaining the

plea of collateral estoppel. 474 F. 2d 798 (1973), Peti-

tion A 33-46. The court said at page 811 (Petition

A 46):

‘We believe the instant eases show precisely why

the Supreme Court in Blonder-Tongue, overruled

Triplett? and commenced the sustaining of pleas

2 These actions originally involved all three of the patents held

invalid in Bendix. In 1971 the actions were voluntarily dismissed

with prejudice insofar as they affected two of these patents, leav-

ing only "697 in suit.

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

5

of estoppel by judgment in certain patent cases

[footnote omitted ]”’.

In the meantime, a similar action had been filed by

plaintiffs against the United States in the Court of

Claims. After trial, Commissioner Davis of that court

recommended a holding of invalidity in a decision re-

ported sub nom. Technograph Printed Circuits, Ltd.

y. United States at 164 USPQ 584 (1970). The ree-

ommendation was then briefed and argued to the

Court of Claims but had not been acted upon when

the decision of this court in Blonder-Tongue was is-

sued. A plea of collateral estoppel on the basis of the

prior Bendix adjudication was then briefed and argued

to the Court but has not as yet been decided.

Plaintiffs had also filed similar actions in the Dis-

triet Court. for the Northern District of Illinois.

Those actions were converted to a class action involy-

ing some 200 defendants. A trial of four weeks dura-

tion was had in that eourt. Parts of the Bendix ree-

ord and the Court of Claims reeord were included in

the reeord of that trial. Before decision could he

reached, Blonder-Tongue was decided by this Court.

A plea of collateral estoppel was then entered, but

plaintiffs requested the Illinois court to await Judge

Watkins deeision in these eases before ruling on that

plea. After Judge Watkins*® deeision was entered,

Judge Will of the Mlinois court also sustained the

plea of collateral estoppel. His opinion agreed with

Judge Watkins’ opinion in the instant cases that plain-

tiffs had a full and fair opportunity to establish the

validity of their patents in Bendir. Teehnograph

Printed Circuits, Ltd. v. Methodc, Tnc., VA USPQ 297

(1972). The appeal from that decision to the Court

6

of Appeals for the Seventh Circuit has been briefed |

and argued but not as yet decided.

Plaintiffs had also filed a number of actions in Cali-

fornia alleging infringement of the same patents. A

motion for summary judgment by one of the defend-

ants therein based on Bendix was met by a contention

that plaintiffs had new evidence which showed the

asserted error of the Bendix decision. Chief Judge |

Hall ordered plaintiffs to specify that evidence and

its relevancy to the claims of the several patents. For )

failure to comply with the order he dismissed the

California actions, Technograph Printed Circuits v.

Packard Bell Electronies Corp., 290 F. Supp. 308

(C.D. Calif. 1968). An appeal was taken from that

decision and briefed but was held in abeyance pur- ©

suant to a stipulation between the parties that the

action would be dismissed with prejudice if the Ili-

nois cases were decided against plaintiffs. The Illinois

eases having been dismissed, the actions in the Ninth

Cireuit have also been dismissed.

Respondents are of the view that no further state-

ment of the ease is necessary. Petitioners’ 19 page

‘“statement’’. is largely argument, which will be re-

sponded to where necessary in the following section

of this brief.

ARGUMENT

l. The Issue in This Litigation Concededly Is the Identical

Issue Decided in Bendix.

Plaintiffs assert that there is a conflict between the

decision below and the decision of the Seventh Circuit

in Bourns Inc. v. Allen Bradley Co., 178 USPQ 193

(1973), Petition A 57. There is no conflict because

7

the point in question is not properly presented by the

record of this case.

Plaintiffs here seek for the first time to assert that

4 different issue is involved than in Bendix, after

failing to identify the new issue in the courts below,

and even conceding that the issue here is the identieal

issue decided in Bendir. It is axiomatic that a new

issue may not be raised for the first time in the Su-

preme Court. Virtue v. Creamery Package Mfg. Co.,

7 US. 8, 38-9 (1913); MeCullough v. Kammerer

Corp., 323 U.S. 327, 328 (1945), California v. Taylor,

953 U.S. 553, 557, note 2 (1957); Lawn v. United

States and eases there cited, 355 U.S. 339, 362, note

16 (1958).

Plaintiffs evidently are desperately trying to stave

off a final decision in this ease after 14 years of litiga-

tion in which their involved patent has always been

held invalid wherever adjudicated. They seek retrial

of the validity of their patent with the concomitant

pressures toward settlement adverted to by this Court

in deciding that a plea of collateral estoppel was jus-

tifiably asserted in patent litigation. Blonder-Tongue,

402 U.S. at 338 (1971). The expense of such a retrial

is objectively demonstrated here. As plaintiffs them-

selves say, the retrial of validity in the Illinois case

(which oceurred prior to Blonder-Tongue) took four

weeks, despite the fact that the Bendix record, and the

record of the Court of Claims trial, were stipulated

into the Illinois action. (Petition 7).

Plaintiffs newly asserted ‘‘issue’’ is that three of

the claims asserted in this litigation were not expressly

adjudicated in Bendix. Tf there was any merit in this

issue it could have been raised in the District Court.

8

Far from raising the issue, counsel for plaintiffs ac |

tually conceded that there was no such issue, by ex-

pressly stating that the issue in these cases was the

same as in Bendix. Plaintiffs so admit in a footnote

at page 24 of their petition, They now characterize

this as an “‘aside’’ but it was a clear concession from

which they never attempted to withdraw, even after

Judge Watkins said below:

“Tt is conceded that the issue in suit is the iden-

tical question finally decided against the plain |

tiffs in Bendix, who are the plaintiffs here.’ 340

F, Supp. at 425, Petition A 5.

If the newly asserted issue of claims not asserted

in Bendir had any merit, it surely would have been —

‘aised in the briefing and argument to the Court of

Appeals. It was not. That court said:

“We turn to the next requirement of Blonder-

Tongue: that the issues in both proceedings be

identieal. In Bendix, the district court held that

claims 4, 5, 10, 14, 15 and 16 of °697 and certain

claims of 7165 and °960 were invalid for obvious-

ness and anticipation. 218 F.Supp. 1, 31, 08. Th

the present appeal, no issue is ‘aised concerning

165 or °960. Plaintiffs claim only that claims 4

and 10-14 inclusive of °697 were infringed by the

defendants. Although it appears that the valid-

ity of claims 11, 12 and 18 of ’697 were not spe-

cifically mentioned as being invalid in Bendix, am

examination of those claims shows that they were

dependent on claim 10, [footnote omitted], which

was held invalid in Bendix. Also, the trial court's

opinion states that the parties here conceded that

the issues in suit were identical to the issues de-

cided against plaintiffs in Bendix (340 F. Supp.

423, 425), and this is not contested on appeal. Ac-

cordingly, the requirement of Blonder-Tongue

ives

9

that the issues be identical in both proceedings

has been complied with.’’ 474 F. 2d at 801-2, Pe-

tition A 36-7 (emphasis owrs throughout).

Rehearing was not requested.

In the circumstances, assertion of this ‘*new’’ issue

at this stage is not a valid reason for granting the

petition.

Petitioners also assert (Petition 23-4) a conflict be-

tween certain language in 35 U.S.C, § 282 and a foot-

note statement by the Court of Appeals below (474

F. 2d at 802, Petition A 37) that claims 11, 12 and 13

were invalidated by the holding of invalidity of claim

10 because they are dependent on invalidated claim

10. This assertion is without basis for the following

reasons: -

1.) the statutory language relied upon was added

subsequent both to the issuance of the ’697 patent and

to the decision of invalidity in Bendix and cannot be

presumed to be retroactive and,

2.) even if the decision below were in conflict with

the law, that holding would not properly be raised

here because the basic issue of nonadjudication of

elaims 11-13 in Bendix was waived below.

Plaintiffs’ argument (Petition 93-4) omits acknowl-

edgement that the language of § 282 relied upon was

added to the statute in 1965. Section 10 of the Act of

July 24, 1965 (Public Law 89-83, § 10, 79 Stat. 261)

changed the first paragraph of Section 282 of Title 35

to read as follows, the added language being italicized :

‘A patent shall be presumed valid. Each claim

of a patent (whether in independent or depend-

ent form) shall be presumed valid independently

10

of the validity of other claims; dependant clains

shall be presumed valid even though dependent

upon an invalid claim, The burden of establishing

invalidity of a patent or any claim thereof shall

rest on the party asserting it.”’

The 1965 change was subsequent both to the issuance

of the ‘697 patent in 1955, and the date when the

Bendix decision beeame tinal in 1964. The presump-

tion of course is that the statute was not retroactive,

sinee it was not said to be so, Union Pacific Railroad

Co. y. Laramie Stock Yards Co., 231 U.S. 190, 199

(1913) ; Claridge Apartments Co. Vv. Commissioner of

Internal Revenue, 323 U.S. 141, 164 (1944); Lyon vy,

Bausch and Lomb Optical Co., 224 F. 2d 530, 586 (2

Cir. 1955) certiorari denied 350 U.S. 911 (1955).

Moreover, the challenged statement of the Court

of Appeals concerning invalidity of elaims 11-18 was

merely in support of its reeognition that the issue in

these eases was the same as in Bendix, a point already

coneeded by plaintiffs below. The statement was un-

necessary to the court's atfirmanee of the collateral

estoppel holding, because plaintiffs chose not to raise

below (and indeed waived) the validity of these

elaims as an issue separate from the issue in Bendis.

Whether or not the lower court was right in the chal-

lenged statement is not properly before this Court.

Tyrrell v. District of Columbia, 243 U.S. 1, 5-6 (1917).

Finally, the newly asserted issue of the elaims not

asserted in Bendix would be without merit even if

presented by the reeord, A’ eursory glanee at the

claims not asserted in Bendix (474 F. 2d at 802, Peti-

tion A37) shows that they would necessarily stand

or fall with the elaims which were expressly adjudi-

eated invalid in Bendix, beeause they recite features

ST Oa nn rae ~

vee ‘bee’

R a Ura Nas

11

old in the prior art relied on in Bendix, All the claims

add to adjudicated claim 10 is a recitation that the

printing step of that claim is either:

a) letterpress printing—claim 11,

b) offset printing—elaim 12, or

e) photomechanical printing—elaim 13.

The prior art in Bendix showed these various types

of printing to be old. As Judge Watkins said, refer-

ring to the Stevens and Dallas prior art reference

(stated to be the ‘most significant single reference”

in Bendix, 218 F. Supp. at 25):

“Production of the pattern by photomechanical

means, or by drawing, stamping or printing di-

rectly on the metal, is also clearly disclosed.’* 218

F. Supp. at 27.

He also quoted the same reference as saying:

**Ordinary printers ink may be used for this

purpose,’ *? 218 F. Supp. at 27.

The use of both letterpress and offset printing to

deposit printers ink long antedate the birth of any-

one who will ever read this brief.

Certainly, if plaintiffs had chosen to assert elaims

11-13 in Bendix, they would have been held invalid

for the same reasons as claim 10. Their recited fea-

tures were old in the very prior art upon whieh that

claim was held invalid. Plaintiffs would not be en-

titled to a new trial here merely beeause some claims

were not asserted in Bendix, when those claims would

stand or fall with claims that were asserted in Bendix

and found to be invalid. So to hold would place a

premium on a tactie by which claims which might be

12

asserted are held back for later assertion against an-

other defendant, even after the asserted claims are

held invalid, thereby to vitiate the salutary effect of

Blonder-Tongue.

Plaintiffs themselves believed before this new issue

was asserted here that claims 11-13 stood or fell with

claim 10. That belief was manifested by their express

stipulation to that effect in the Illinois litigation.

There, a pretrial stipulation signed by plaintiffs’

counsel stated:

“99 Claims 11, 12 and 13 are dependent upon

claim 10 and merely recite different specific

printing steps, namely, printing by letterpress,

offset or photomechanical means, respectively.

93. Claims 11, 12 and 13 are basically the same

as claim 10 except for the specific means of print-

ing; they are contingent upon elaim 10 and will

either stand or fall with claim 10.”

This concession explains why no issue was earlier

made in this litigation of the fact that claims 11-13

were not expressly asserted in Bendix. It illuminates

the frantic last-gasp nature of this attempt to stave off

an end to this protracted and expensive litigation.

2. Concurrent Findings of the Courts Below. Fully Supported

by the Record, Establish that the Courts in Bendix Did

Not Wholly Fail To Grasp the Technical Subject Matter

and Issues in Suit.

This Court in Blonder-Tongue, 402 U.S. at 333

(1971) stated that a plea of collateral estoppel should

not be automatically accepted, but that:

“the patentee-plaintiff must be permitted to dem-

onstrate if he ean, that he did not have ‘a fair

opportunity procedurally, substantively and evi-

13

dentially to pursue his claim the first time.’ Eisel

y. Columbia Packing Co., 181 F Supp 298, 301

(Mass 1960).”’

One of the ‘appropriate inquiries” suggested for the

determination of that issue was:

« . . 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. at 333.

Plaintiffs contended below that Bendix ‘‘was one of

those relatively rare instances."’ Both courts below

fully considered this contention and all of its hases

and found them to be without merit. The opinions

below provide ample support for this finding.

Plaintiffs here rely on only two points in support of

their argument to the contrary. They assert (Peti-

tion 10-15, 24-5) that the courts in Bendir failed to

understand two prior art references, those of Stevens

and Dallas, and Whilems, and that they failed to ap-

preciate the significance of a disclosure in another

reference, that to Norris. Judge Watkins carefully

examined into each of these contentions and rejected

them at 340 F. Supp. 433-36, Petition A 23-8.

The Court of Appeals, by a panel wholly different

than the panel which decided Bendix, also carefully

considered these same contentions and rejected them

as follows:

“Contrary to plaintiffs’ assertion, the fact that all

contentions concerning anticipation were disposed

of without controversy and not considered by this

court made it erystal clear that they were no lon-

14

ger any part of the ease. To repeat, during oral

argument, counsel for Bendix admitted that the

Stevens and Dallas application was not an antici-

pation of the metallic resist method of *697. This

court did not affirm the distriet court in Bendis

on the basis of anticipation, but on the ground of

obviousness. Thus, the panel did understand the

effect of the disclaimer by Bendix’s counsel and

neither approved of nor considered the district

eourt’s holding with reference to anticipation in

affirming the decision of invalidity as to *697.

Having again reviewed the actions of the district

court in Bendix, we are of opinion that the district

judge did not misconstrue Whilems or Stevens and

Dallas to the extent that he wholly failed to under-

stand the technical subject matter and_ issues.

Whilems. the Stevens and Dallas application, and

Eisler all concerned themselves with the use of

-arious priuting and engraving techniques to make

electrical cireuits. Where the district court erred

in Bendix on the issue of anticipation was his nec-

essary holding that the precise claims of the

Stevens and Dallas application anticipated Eisler

°697. Even if Whilems and the Stevens and Dallas

application were so misconstrued by the district

court, we are of the opinion that the opinion in

Bendix clearly shows that this was not one of those

relatively rare instances where the courts wholly

failed to grasp the technical subject matter and

issues in suit. [footnote omitted]. The issue of

anticipation having been removed, there is no evi-

dence to show that this court wholly failed to grasp

the situation in Bendix, either the issues or techni-

eal subject matter.” 474 F. 2d at 805-6, Petition

A 40-1.)

As to Norris, the court below said:

‘Plaintiffs also raise an issue that the Norris

Patent No. 2,282,203 (°203), issued May 5, 1942,

Pg a ets .

: reer

15

was improperly considered by the court in Bendiz.

Even if this were true, plaintiffs have shown no

reason why they could not have made the same

argument to this court in the Bendir appeal. They

had a fair chance to litigate the issue in Bendir

and it may not be raised now. In all events, it

does not show that the district court, in Bendix,

did not grasp the technical subject matter or the

issues involved. (474 F. 2d at 807, Petition A 42.

Plaintiffs’ contentions here are without support, as

demonstrated by the opinions of the lower courts. The

overly broad statement by the District Court in Bendir

that Stevens and Dallas anticipated all three patents in

suit was corrected before the Court of Appeals in that

ease. That Court’s opinion demonstrates that it did

not rely on that statement, and the Court of Appeals

in its opinion below so found, contrary to plaintiffs’

unsupported statement to the contrary (Petition

10-11). There is no evidence to support plaintiffs’

assertion (Petition 11) as te the Whilems patent, as

there is no evidence to support plaintiffs’ assertion

(Petition 15) that the additional disclosure in Norris

was expressly considered by the Examiner in allowing

the patent in suit. Indeed, the points concerning

Whilems and Norris if valid, could have been made

in Bendix, where both patents were expressly consid-

ered. They were not, doubtless heeause plaintiffs’

“highly experienced and efficient’? counsel (340 F.

Supp. at 426, Petition A 7) considered them to be

without merit.

Plaintiffs’ contention that the courts in Bendir

wholly failed to grasp the technical subject matter and

issues in suit is patently without support.

16

3. The Allegedly Suppressed “Crucial Evidence” in Bendix

Was Neither Suppressed Nor Crucial. as Concurrent Find-

ings of the Courts Below Demonstrate.

Judge Watkins’ opinion below fully considered

each of the 11 items of ‘*newly discovered evidence”

upon which plaintiffs relied in the Distriet Court 340

F. Supp. 426-30, Petition A 7-16. As to this evidence

he said:

“Most of this could, with reasonable diligence,

have been available for introduction in the Bendix

trial: and to the extent that it could not, the Court

does not believe that its introduction in the pend-

ing cases would change the result reached in

Bendix.” 340 F. Supp. at 425, Petition A 5.

The 11th and last item of *‘newly discovered evi-

denee’’ presented by plaintiffs in the District Court is

the only one relied on in the Court of Appeals, and

here. That item concerns the Rubin patent, which was

owned by plaintiffs and was of record in Bendix. As

Judge Watkins noted below:

“Whatever arguments could be made therefrom

could have been made in that ease.’’ 340 F. Supp.

430, Petition A 15.

The item also concerns certain notes made by Rubin

on September 30, 1943, prior to the filing of his appli-

cation for patent on April 5, 1944.

The Court of Appeals considered the notes and plain-

tiff’s contentions that the notes both were suppressed in

Bendix and were erucial evidence. Both contentions

were dismissed as without foundation. 474 F. 2d at

807-10, Petition A 42-45. With respect to the eonten-

tion of cruciality, the court said:

‘In plaintiffs’ appeal in Bendix, the point is

raised that many who possessed more than ordi-

17

nary skill in the art had failed to discover the

processes described by Eisler’s alleged inventions,

thus showing non-obviousness. (See brief of

Plaintiffs in Bendir, p. 30). Rubin’s notes were

at best cumulative. This court rejected this argu-

ment then, and we are of opinion now that the

presentation of the Rubin notes would not have

changed our decision, especially since they were

cumulative evidence of a secondary character.

[footnote omitted]. We do not then consider the

Rubin notes erucial evidence within the meaning

of Blonder-Tongue.”’ 474 F. 2d at 808-9, Petition

A 43-4.

The Court then went on to find that:

“|, plaintiffs were not deprived of [the notes]

without fault of their own.’’ 474 F. 2d at 809,

Petition A 44.

Bendix had expressly notified plaintiffs prior to trial

that the Rubin invention was conceived as early as

September, 1943, thereby placing them on notice of

the existence of evidence to that effect. (The notes in

question are dated September 30, 1943.) Bendix fur-

ther deseribed Rubin's invention in a pre-trial outline

of his anticipated evidence. Plaintiffs contended he-

fore the Court of Appeals, and here, that they were

misled by Bendix and by Rubin into not discovering

the notes in question before the Bendix trial. The

Court of Appeals disposed of that contention as fol-

lows:

“We disagree with the contention that plaintiffs

were misled by Bendix and Rubin. We believe

that Bendix’s supplemental answer to their inter-

rogatory filed in January, 1961 and the September

292, 1961 outline of Rubin’s expected testimony was

more than sufficient to put plaintiffs on notice that

Rubin might have notes on processes which were

" <

18

relevant to the subject matter in suit. Plaintiffs /

show no basis for their assumption that Rubin

wanted more than his usual fee for searching his

records. The truth probably is that both parties

were uneertain of how Rubin’s testimony might

affect their ease and therefore neither party called

him to testify in the Bendix trial. Additionally,

plaintiffs have offered no plausible excuse whatso-

ever for their failure to take the discovery deposi-

tion of Rubin. In view of the supplemental answer

to the interrogatory and the outline of Rubin's

proposed testimony, the failure to even attempt

to take Rubin's discovery deposition, standing

alone, would be sufficient to take the Rubin notes

out of the ‘tno fault of their own requirement of

Blonder-Tongue.” 474 F. 2d at 810, Petition

A 45.

Plaintiffs’ unsupported conjectures (Petition 17-19,

25) do not provide any basis to disturb this finding.

Moreover, they have already achieved as much as they

would achieve on a retrial based on the Rubin notes — ,

because the courts below have considered these notes

and held that they would not have caused a change in

the conelusion of invalidity in Bendix.

The plea of estoppel was properly sustained in the

face of this contention. }

4. The Decision of the British House of Lords that a British

Patent on a Different Invention Was Valid Does Not Jus- )

tify Rejection of the Estoppel Plea Here.

Plaintiffs’ contention is based on the disposition by

the British House of Lords * of their British patent on

the technique they eall ‘print and eteh,”’ to distinguish

4 Mills & Roekley (Electronics) Limited v. Technograph Printed

Circuits, Limited 12 Reports of Patent, Design and Trademark

Cases 331 (1968).

Nal BG Fa Se i ae Sai nity Ne

—

19

from the technique of the patent here in suit which

they call ‘print, plate and metallie etch resist.’’ (Peti-

tion 9). The relevancy of that contention might be

questioned, especially when plaintiffs elsewhere argue

that “‘print and etch”’ is “irrelevant and immaterial

to the patent in suit’? (Petition 13).

In any event, the Court of Appeals rejected plain-

tiffs’ contention, expressly agreeing with the District

Court’s analysis of the House of Lords decision, during

which, inter alia, it was pointed out that the single

most pertinent reference in Bendix was not even before

the House of Lords. The Court then said:

“More importantly, allowing relitigation in_the

light of the House of Lords decision would allow

subsequent litigation in light of a decision in a

foreign forum which would not have been per-

mitted in a domestic forum by Blonder-Tongue.

We are not constrained to so weaken the Blonder-

Tongue ruling by encouraging disappointed plain-

tiff patent holders to resort to a foreign forum in

order to escape the consequences of domestic pro-

eedural rules in federal courts set out by the

Supreme Court.”’ 474 F.2d at 810. Petition A 45.

Plaintiffs’ contention is without merit.

CONCLUSION

The coneurrent holdings of the courts below were

correct. This petition should be denied.

Epwarp F. McKir, Jr.

Wrui1M E. Scuvuy er, JR.

Counsel for Respondent

WESTINGHOUSE ELECTRIC

CorRPORATION

1000 Connectieut Avenue

Washington, D. C. 20036

peewFILE CoPY J

if MICHAEL ROBAK, J2.,CLERK

a a —, .

IN THE

Supreme Court of the United States

OCTOBER TERM, 1973 i

No. 73-147

TrecunocrapH Printep Circuits, Lrp. and

TecHNOGRAPH Printep Exectronics, [Nc.,

Petitioners,

v.

Marriv-Marierta Corporation, WESTINGHOUSE ELECTRIC

Corporation, McDonneLtiL ArrcrartT CoRrPoRATION and

INTERNATIONAL TELEPHONE & TELEGRAPH CoRPORATION,

Respondents.

PETITIONERS’ APPENDIX

SipNeY BENDER

Aaron LewitTEs

Counsel for Petitioners

405 Lexington Avenue

New York, New York 10017

A-67

In the

United States Court of Appeals

For the Seventh Circuit

SepTreMBER TERM, 1972— Apri Session, 1973

Nos. 72-1741, 72-1742, 72-1743,

72-1744 and 72-1745

TRCHNOGRAPH PRINTED Crrcurts,

Ltp., and TrcHNoGcRaPH PRINTED

E.rctronics, INCORPORATED,

Plaintiff:-Appellorts, and

Cross-Appellees,

v.

MetHonr Erectronics, Inc.,

Defendant-Appellee,

v

GTE Avtomatic Evectric Iscor-

PORATED,

Defendant-A ppellee and

Cross-Appellant,

v.

Werrcor’ Execrronics, Incon-

PORATED,

Defendant-Appellee.

Vv

Howarp Honipinc Company,

Defendant-Appellec. 7

Appeals from the

United States Dis-

trict Court for the

Northern District

of Illinois, Eastern

Division.

Nos. 62 C 1761

63 C 36

63 C lll

63 C 142

Hvuserat L. Wau.

Judge.

Arcvep Juxe 11, 1973-—— Decipen Averst 27. 1978

Before Kitry and Sprecher, Circnit Judges, and Escr-

BACH, District Judaqe.*

* District Judge Jesse E. Eschbach of the Northern District of Indiana

is sitting by designation.