Appendix — Technograph Printed Circuits, Ltd. v. Martin Marietta Corp.

A-68

72-1741, 72-1742, 72-1743,72-1744, 72-1745 2

Sprecuer, Circuit Judge. The history of these cases

confirms the wisdom of Blonder-Tongue Laboratories,

Inc. v. University of Iinois Foundation, 402 U.S. 313

(1971) and why the doctrine it announced is particularly

applicable here.

Between 1958 and 1963, Technograph Printed Circuits,

Ltd., and Technograph Printed Electronics, Inc. instituted

some 74 civil actions for patent infringement against

approximately 80 manufacturers of electronic equipment

in 18 different United States District Courts, and another

action against the United States in the Court of Claims?

Prior to the litigation, the president of Printed Flee.

tronics, an American company, wrote to Printed Cirenits,

n British company:

“The Technograph patents are inherently weak and

at heart only form the legal basis for making a claim

against industry. Their real worth in America depends

entirely how strongly they can be backed by both

money, legal talent and influence.

“... We must litigate if we expect to extract worth.

while sums from indnstry.”

eee

The infringement actions were hased upon three United

States patents relating to methods for the manufacture

of printed electric or magnetic cirenits? — No. 2,441,960

(960) issued on May 25, 1948, No. 2,706,697 (’697) issued

on April 15, 1955, and Reissne No. 24,165 ('165) issued

on June 12, 1956.

The first trial took place in the District of Marvland

in an action against The Bendix Corporation (Bendiz)

where, after 29 trial days, the filing of 1001 exhibits,

several additional days spent by the court in visiting

the Bendix and plaintiffs licensed plants, 600 pages of

post-trial briefs and two days of oral argument, Judge

'Technograph Printed Circuits, Ltd. v. Methode Electronics, Inc. 285

F. Supp. 714, 716 (N.D. Ill. 1968) (detailing the history of the Technograph

litigation) .

*The manufacturing processes are fully described in Technograph

— Circuits, Ltd. v. Bendix Aviation Corp., 218 F. Supp. 1 (D. Md

1963)

|

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ee

Bare ot A Tin ooh oe Si

WAGs or

A-69

3 72-1741, 72-1742, 72-1743, 72-1744, 72-1745

Watkins on May 27, 1963 held in a 67-page opinion that

the claims at issue in all three patents were invalid.

The Court of Appeals for the Fourth Cireuit affirmed

and certiorari was denied by the Supreme Court. Techno-

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

918 F. Supp. 1 (D. Md. 1963), aff’d per curiam, 327 F.2d

497 (4th Cir. 1964), cert. denied, 379 U.S. 826 (1964).

The plaintiffs represented in other courts that the

Marvland case was the “test case.” After the test case,

the British company transferred its rights in the patents

to the American Company.

The plaintiffs had filed six infringement actions in the

Northern District of Minois in 1962 and 1963. Two were

settled and Judge Igoe granted summary judgment in

favor of the remaining four defendants after Judge

Watkins’ decision on the theory that “one bite of the

cherry ought to be enough.” We reversed and remanded

for further proceedings on the authority of Aghnides

v. Holden. 226 F.2d 949, 950 (7th Cir. 1955), where we

cited Triplett v. Lowell, 297 U.S. 638, 642 (1936) for the

proposition that “[nJeither reason nor authority supports

the contention that an adjudication adverse to any or all

the claims of a patent precludes another suit upon the

same claims against a different defendant.” Technograph

Printed Circuits, Ltd. v. Methode Electronics, Inc., 356

F.2d 442, 448 n.3 (7th Cir. 1966), cert. denied, 384 US.

90, 1002 (1966). Upon remand the four eases were con-

solidated for purposes of discovery and trial, were de-

clared to be class actions so far as the defendants were

concerned (Technograph Printed Circuits, Ltd. v. Methode

Electronics, Inc., 285 F. Supp. 714 (N.D. Til. 1968)), and

the plaintiffs’ claims relating to Nos. 960 and "165 were

dismissed with prejudice on April 24, 1968, with no appeal

being taken therefrom.

In the meantime, all of the files, records. exhibits and

transcripts from the Bendir case in Maryland had been

sent to the United States District Court for the Central

‘Technograph Printed Circuits, Ltd. v. Packard Bell Electronics Corp

20 F. Supp. 308, 312 (C.D. Cal. 1968). See also, Technograph Printed

Circuits, Ltd. vy. Martin-Marietta Corp, 474 F. 798, 804 (4th Cir. 1973).

ae

A-70

72-1741, 72-1742, 72-1743, 72-1744, 72-1745 4

District of California, where 13 actions by the Techno.

graph plaintiffs had been consolidated. The defendants

in California moved for summary judgment on the ground

of estoppel by the Maryland judgment. While the motions

were pending, the court granted the defendants’ motion

to compel the plaintiffs to produce any evidence “above

and beyond the evidence they presented” in the Maryland

ease.‘ The court on August 8, 1968 found that “the

Response of plaintiffs . . . together with the unindexed

box of documents .. . [filed with the Clerk] was a wilful,

intentional, and conscious flouting and disobedience of the

Orders of this Court ... [which] warrant the severest

condemnation,” whereupon the 13 actions were dismissed

with costs in favor of the defendants. Technograph

Printed Circuits, Ltd. v. Packard Bell Electronics Corp.,

290 F. Supp. 308, 320 (C.D. Cal. 1968). There is no pub-

lished record of an appeal from that judgment. ~

Meanwhile there also was activity in plaintiffs case in

the United States Court of Claims. After the court denied

two motions by the government for partial summary

judgment,’ trial was held before Commissioner Davis who

found claims 4, 10, 13 and 14 of No. "697 to be invalid

on March 2, 1970. Technograph Printed Circuits, Ltd. v.

United States, 164 U.S.P.Q. 584 (1970). We are advised

by counsel for the parties here that this decision is under

advisement before the Court of Claims together with a

government motion urging estoppel based on the Bendiz

case.

On May 3, 1971, the Supreme Court of the United

States decided Blonder-Tongue Laboratorics, Inc. ¥.

University of Illinois Foundation, 402 U.S. 313, where

the Court concluded that “Triplett should be overruled

to the extent it forecloses a plea of estoppel by one facing

a charge of infringement of a patent that has once been

declared invalid.” 402 U.S. at 350. The Court added that

‘The court’s order appears as Appendix II, Technograph Printed

oa Ltd. v. Packard Bell Electronics Corp., 290 F. Supp. 326 (CD.

. 1967).

STechnograph Printed Circuits, Ltd. v. United States, 370 F.2d Si

(Ct Cl 1966) and 372 F.2d 969 (Ct. Cl 1967). In the latter case, the

Court of Claims relied upon Triplett v. Lowell, 297 US. 638 (1936) and

the possibility of new or additional evidence, 372 F.2d at 978-80.

A-71

5 72-1741, 72-1742, 72-1743, 72-1744, 72-1745

a plea of estoppel must not be automatically accepted

but that a determination should be made “whether a paten-

tee has had a full and fair chance to litigate the validity

of his patent in an earlier case ... .” 402 U.S. at 333.

Thereupon, the defendants in four suits (which had been

filed in the district court in Maryland, the Marttn-Martetta

case, in addition to the concluded Bendix case) moved

for dismissal on the ground that Bendix constituted

collateral estoppel. Judge Watkins, after carefully apply-

ing the Blonder-Tongque standards for determining whether

the plaintiffs had a full and fair trial in Bendix and after

evaluating plaintiffs’ contentions as to why they did not,

including virtually all the contentions urged before us

in the present case, sustained the pleas of estoppel and

dismissed the eases on March 20, 1972. Technograph

Printed Circuits, Ltd. v. Martin-Marietta Corp., 340 F.

Supp. 423 (D. Md. 1972).

On May 31, 1972, Judge Will, who had by that time

fully tried the four Chicago consolidated cases* agreed

with Judge Watkins that the Bendix case presented the

plaintiffs with a full and fair opportunity to establish

the validity of their patents and that it was “just and

equitable to allow the plea of estoppel,” thus dismissing

the consolidated cases before him. Technograph Printed

Circuits, Ltd. v. Methode Electronics, Inc., 174 U.S.P.Q.

297 (N.D. Ml. 1972).

Thereafter on February 20, 1973, the Court of Appeals

for the Fourth Cirenit affirmed Judge Watkins in Techno-

graph Printed Circuits, Ltd. v. Martin-Marietta Corp.,

474 F.2d 798 (4th Cir. 1973). Judge Widener in a detailed

and exhaustive consideration of the application of Blonder-

Tongue to Bendix in view of plaintiffs’ multiple conten-

tions against its application, concluded at page 811:

“Here, the same plaintiffs considered Bendtz a test

ease by which they sought to establish the validity

of Hisler’s patents °165, "960. and ‘697. They now

seek to relitigate the issue of validity as to °697.

*The record brought up to us from Judge Will included 17 volumes

of pleadings, 42 volumes of transcript, a great number of depositions,

4 cartons plus 8 folders of exhibits, and a box of “confidential documents.”

A-72

72-1741, 72-1742, 72-1743, 72-1744, 72-1745 6

They failed to convince the district court in Bendix

of its validity, and they failed on appeal to convince

us that the district court was wrong in the instant

cases. Plaintiffs have failed to convince the same

district judge who decided Bendix that they did not

have a full and fair opportunity to litigate in Bendiz.

Again, we agree with the district court. We are of

opinion that the plaintiffs had a full and fair oppor-

tunity to litigate the validity of 697 in Bendix and

that it is just and equitable to allow defendants’

pleas of estoppel. We believe the instant cases show

precisely why the Supreme Court, in Blonder-Tongue,

overruled Triplett and commenced the sustaining of

pleas of estoppel by judgment in certain patent cases.”

We agree with Judge Widener and the Fourth Circuit,

which considered virtually the same contentions made

here by the plaintiffs for the non-application of Blonder-

Tongue. We also agree with Judge Will who had the

opportunity to hear all of plaintiffs’ evidence and to

evaluate it in the light of the Blonder-Tongue standards

for determining whether Bendix was in fact a full and

fair trial.

Subsequent to oral argument, plaintiffs urged by letter

that we consider our recent decision in Bourns, Inc. v.

Allen-Bradley Co., Nos. 72-1222 and 72-1228 (June 14,

1973), where in an opinion by Mr. Justice Clark, sitting

in the Seventh Circuit by designation, we held that

Blonder-Tongue does not apply to claims not litigated

in the prior ease. Plaintiffs have argued that Bendix

adjudicated the invalidity of method elaims 4, 5, 10, 14,

15 and 16 of ’697 and that in the present cases claims 11,

12 and 13 are also involved. However, prior to the trial

before Judge Will, the parties agreed to finding of fact

No. 23 which reads:

“Claims 11, 12 and 13 are basically the same as

claim 10 except for the specific means of printing;

they are contingent upon claim 10 and will either

stand or fall with claim 10.”

Even without the stipulation, a reading of claims 10,

11, 12 and 13 demonstrates the complete dependence of

A-73

7 72-1741, 72-1742, 72-1743, 72-1744, 72-1745

11, 12 and 13 upon claim 10.’

Furthermore, the same contention was made in the

Fourth Cirenit proceeding where the District Court found

plaintiffs had there conceded that, although the Martin-

Marietta case involved claims 4 and 10-14 and Bendix

involved 4, 5, 10, 14, 15 and 16, the issues in both cases

were “identical”. 340 F. Supp. at 425. That fact was not

contested on appeal. 474 F.2d at 802.

Under all of these circumstances the invalidity of claims

11, 12 and 13 were established by Bendix.

Defendant GTE Automatic Electric Ine. has cross-

appealed from the trial court’s refusal to award it costs

and attorney fees. In this cirenit, attorney fees are only

awarded under 35 U.S.C. §285 in exceptional cases “to

prevent gross injustice and where fraud and wrong-doing

are clearly proved.” Sarkes Tartzan Inc. v. Philco Corp.,

351 F.2d 557, 560 (7th Cir. 1965).

Although the defendants rely upon a 1951 statement

by Kisler, the inventor of ’960, °165 and ’697, that “we

have fooled the Patent Office” and the 1956 statement

by the president of one of the plaintiffs that the patents

were “inherently weak,” we note in Judge Will’s opinion

that the defendants “were apparently content to go on

litigating indefinitely over the validity of a patent no

matter how frequently it had heen found invalid.” 174

US.P.Q. at 299. In addition, until the Blonder-Tongque

decision, the plaintiffs were justified in relying at least

to some extent upon Triplett v. Lowell. Thus we find that

™10. A method of manufacturing a component of electric and

magnetic circuit systems involving an insulation backed conductive

pathway pattern, which comprises providing insulation backed foil,

printing a negative representation of the pattern upon said foil,

depositing a layer of metal dissimilar to the metal of said foil upon all

parts of said foil, then removing said representation from the

foil, and finally removing all parts of the foil exposed by said removal

of the representation by chemical action attacking the metal of said

rah _ said deposited dissimilar metal whereby said pathway pattern

rmed.

“ll. The method of claim 10 wherein the negative representation

of the pattern is produced by letterpress printing.

“12. The method of claim 10 wherein the negative representation

of the pattern is produced by offset printing. :

“13. The method of claim 10 wherein the negative representation

ef the pattern is produced by photo-mechanical means.”

A-74

72-1741, 72-1742, 72-1743, 72-1744, 72-1745 8

Judge Will did not abuse his discretion in declining to

find this to be the “exceptional” case. We do, however,

assess all costs of these appeals against the plaintiffs.

The judgment is affirmed in all respects.

AFFIRMED.

A true Copy:

Teste:

ececccccceeeesecccccceccecocee cee ecesce coe eosoeee esses eeeeoseseoesessecosots

Clerk of the United States Court of

Appeals for the Seventh Circutt.

USCA 4013—The Scheffer Press, Inc. Chicago. Mlinois—8-27-73—2M

\W

I

REPLY —

BRIEF

OF

PETITIONER

a - FILE COPY a eee a

MICHAEL RODAK, JR.,CLERK

Wietensencanceon = wea

IN THE

Supreme Court of the United States

OCTOBER TERM, 1973

No. 73-147

TrecHNoGRAPH Printep Circuits, Lrp. and

TECHNOGRAPH PrintEeD E.ectronics, INc.,

Petitioners,

Vv.

Martix-Marretta CorporaTioN, WestincHovse ELrEctrIc

) Corporation, McDonneLL Arrcrarr Corporation and

INTERNATIONAL TELEPHONE & TELEGRAPH CORPORATION,

Respondents.

PETITIONERS’ REPLY BRIEF

Sipney BENDER

Aaron LEWITTES

Counsel for Petitioners

405 Lexington Avenue

New York, New York 10017

IN THE

Supreme Court of the United States

OCTOBER TERM, 1973

s

v

No. 73-147

in

v

TrecHnwocraPpH Printep Circuits, Lrp. and

TrecHnoGcrapH Printed Evectronics, Ivc.,

Petitioners,

U.

Martry-Marietta Corporation, WESTINGHOUSE ELEcTRIC

Corporation, McDonneti Armcrarr Corporation and

INTERNATIONAL TELEPHONE & TELEGRAPH CORPORATION,

Respondents.

PETITIONERS’ REPLY BRIEF*

Respondents state (p. 7) that for the first time, in

this Court, petitioners are asserting “that a different

issue is involved than in Bendix”, but that is not so.

The opinions of the District Court and the Court

of Appeals for the Fourth Circuit in Westinghouse both

*On August 27, 1973, the dismissal of the Chicago class action

was aftirmed. Technograph Printed Circuits v. Methode Elec-

tronics, F2d —— (C.A. 7), opinion appended hereto and

cited herein as (A-67 et seq.).

clearly state that the instant complaints are for alleged

infringement of “clatms | and 10-14 inclusive of “6977 (A

and A-35, emphasis supplied) and the Fourth Cirenit below

acknowledged that Bendis only adjudged “claims 4.5, 10,

14. 1d. and 16 of “697° (A-36) invalid. Therefore, both

courts below recognized on the face of their opinions that

Bendix did not adjudicate the validity of claims 11, 12 and 15.

Contra respondents (p. 7). the validity of claims 11, 12 and

13 ix not a “new issue” being **raised for the first time

in the Supreme Court.” Plaintiffs never waived their con-

tention that claims 11, 12 and 13 were valid and that they

were not estopped by Bender under Blonder-Tongue trom

establishing the validity of these claims in a second trial.

Respondents” reference to agreed finding of fact No. 3

in the Chicago class action is completely beside the point.

In that finding the parties agreed, for purposes of a deei-

sion on the merits of “697 by the U.S. District Court a/ter

trial, that claims 11, 12 and 15 **are contingent upon claim

10 and will either stand or fall with claim 10. * That plainly

hax nothing te do with collateral estoppel. When the pe-

titioners agreed to that finding, they were advocating,

under Triplett, for a decision that Bendix was erroneous

and should not be followed, and that all the enumerated

claims were valid. As a matter of law, under Bourns, Inc. v.

ANen-Bradley Co. (CA. 7, June 14, 1973, A-o1), an_estop-

pel against a decision on the merits as to one claim, be-

cause previously adjudicated on the merits, is no estoppel

against a decision on the merits of another claim whieh

hax not been previously adjudicated on the merits.

That Bendix, in invalidating claim 10, could not be an

adjudication on the merits o1 claims 11, 12 and 15, net

only follows from Bourns, supra, hut is mandated by the

statute itself (35 U.S.C, § 282): “dependent claims shall

he presumed valid even though dependent upon an invalid

claim”. Therefore, as a matter of law, under Bourns and

\ 282, the petitioners are, at least, entitled to a determi-

nation on the merits of claims 11, 12 and 13 of “697.

3

Contra respondents, petitioners’ appendix (A-1) clearly

indicated that , 282 was cited * As amended, July 24. 105".

Contra respondents, petitioners did wef claim and are wot

caiming that the 1965 amendment te © 282 is retroae-

tive. On the contrary. plaintiffs’ claim is that the 1965

amendment to Seetion 282 was effective at the time of the

decisions by the Distriet Court (Mareh 20, 1972) and

the Court of Appeals (February 20, 1973) in Westinghouse

on the issue of collateral estoppel under Blowder-Tonguc,

Contra respondents, the contliet between the Seventh

Cirenit (per Bourns) and the Fourth Cireuit (per We stag-

house). first became a new issue on dune 14, 1973, the date

of the Bourns decision, which post-dated the decision of

the Fourth Cirenit in Westinghouse (Pebruary 20, 1973).

Obviously, petitioners could not have raised that contlict

issue prior thereto.

In the August 27. 1975 decision, the Seventh Cirenit

recognizes that Beadir did not adjudicate claims TI. 12.

and 13, yet inconsistently therewith and with | 282 and

Bourus. holds that **the invalidity of claims 11. 12 and 15

were established by Bendis’ (A-75).

In the August 27. 1973 decision (A-G7 et seq.). the

Seventh Cireuit did net discuss any of the petitioners”

other reasons whiy Beudiy should not. under Plowde r-

Tonque, foreclose a decision now, on the merits of any of

the Eisler “697 claims.

Petitioners quoted from the decision by the Fourth Cir-

cuit (A-42) in their petition (pp. 1-11): the quoted excerpt

demonstrated hat in fact the Fourth Cireuit did errone-

ously rely upon the holding of anticipation in Bendis in

aflirming the district court on the issue of *tobviousness”’.

Respondents misrepresent to this Court when they say

petitioners’ statement is *tunsupperted’*; petitioners” quo-

+

tation from the Fourth Circuit's Opinion (A-42) is the

support for plaintiffs’ statement.

Contra respondents (p. 19), the evidence is overwhelming

and unrefuted in support of petitioners’ position on

Whilems and Norris ‘203 (Petition, pp. 11-15).

Petitioners’ position that the courts in Bendix wholly

failed to grasp the technical subject matter in suit as to

‘G97 stands unrefuted.

On the issue of suppression of crucial evidence in Bendix,

respondents have confused the Rubin votes with the Rubin

patent. Contra respondents (p. 16), petitioners’ item of

“newly discovered evidence’ was not the Rubin patent,

which was not only in the Bendix case but was also a ref-

erence cited against Eisler patent “697. It was Rubin's

notes and accompanying file that were suppressed in the

Bendix ease.

Rubin’s notes, not his patent, demonstrated objectively

that Rubin, with all the pieces at hand, failed to conceive

the metallic etch resist process for electrical components.

We further demonstrated in our petition (pp. 15-17) why

such notes were not cumulative and were crucial.

Respondents and the Court of Appeals rely upon Ben-

dix’s supplemental answer to interrogatories to put plain-

tiffs on notice about the Rubin notes but that answer con

tained a misrepresentation, which threw plaintiffs off.

Rendix’s pre-trial outline contained the same misrepresen

tation as its previous answer to the interrogatories. Ben-

dix, which made the misrepresentation, is at fault, not the

petitioners, who innocently failed to discover it until many

years later.

The overriding fact is that Bendix counsel had the note

in their possession and did not produce them at the trial

in Bendix.

)

Objective consideration of the Rubin notes dictates a

different result than reached by Bendix, on the validity of

patent “697.

IV

The respondents (p. 19) rely upon the analysis below

“that the single most pertinent reference in Bendix was not

even before the House of Lords,” to wit, the print and etch

technique of Stevens and Dallas. The Court of Appeals

below, with all due deference, erroneously believed that

Stevens and Dallas was concerned with “electrical circuits”;

(A41) imstead it was concerned with “electrical compo-

vents’: that fundamental confusion explains why the

Fourth Circuit erroneously gave no weight to the House

of Lords decision upholding Eisler’s English patent on the

use of “print and etch"* to manufacture “electrical circuits”

(Petition, pp. 12-13 and footnote).

Since Eisler’s English print and etch patent is non-obvi-

ous, per the House of Lords, a fortiori Eisler’s more so-

phisticated “print. plate and metallic etch resist” “697

patent ix non-obvious.

CONCLUSION

For the reasons stated in the Petition for Certiorari

and this Reply Brief, certiorari should be granted.

Respectfully submitted,

Sipxey BENDER

Aaron LewiTtTEs

Counsel for Petitioners

405 Lexington Avenue

New York, New York 10017

(54516)

a | »

GEILE COryry _ SEP 2 17

JR.,CL

IN THE

Supreme Court of the United States

OcroBeR TERM, 1973

No. 73-147

TECHNOGRAPH PRINTED Circuits, Lip. and

TECHNOGRAPH PRINTED ELEcTRONICS, INC.,

Petitioners

Vv.

MARTIN-MARIETTA CORPORATION, WESTINGHOUSE

ELEcTRIC CORPORATION, MCDONNELL AIRCRAFT

CORPORATION and INTERNATIONAL TELEPHONE &

TELEGRAPH CORPORATION,

Respondents

SUPPLEMENTAL BRIEF FOR RESPONDENTS

Epwarp F. McK, Jr.

Wim E. Scuvy er, JR.

Counsel for Respondent

WESTINGHOUSE ELECTRIC

CoRPORATION

1000 Connecticut Avenue

Washington, D. C. 20036

(Brief adopted by other counsel for the respondents

whose names appear on inside cover)

Parss or Braon 8. Apates Panrriee, Inc., Wasnmeron, D.C.

=>,

Martin-Marretta CORPORATION

By Benzamin C. Howarp

Migs AND STOCKBRIDGE

10 Light Street

Baltimore, Maryland

21202

WESTINGHOUSE ELECTRIC

CoRPORATION

Of Counsel:

BENJAMIN C. HowARD

McDoNNELL AIRCRAFT

CoRPORATION

By Jervis SPENCER FINNEY |

Oser, Grimes & SHRIVER

1600 Md. Nat’l Bank

Building

Baltimore, Maryland

Of Counsel: 21202

CHARLES H. WALKER

ALBErt E. Fry

Fiso & NEAVE

277 Park Avenue

New York, New York 10017

INTERNATIONAL TELEPHONE AND

TELEGRAPH CORPORATION

By Dana M. RAYMOND

BruMBAUGH, GRAVES,

DonoxHvE & RAYMOND

90 Broad Street

New York, New York

Of Counsel: 10004

Norwoop B. OrgIckK

VENABLE, BAETJER & HOWARD

1800 Mercantile Bank & Trust Bldg.

2 Hopkins Plaza

Baltimore, Maryland 21201

IN THE

Suprenwe Court of the United States

OcTOBER TERM, 1973

No. 73-147

TECHNOGRAPH PRINTED Circuits, Lrp. and

TECHNOGRAPH PRINTED ELECTRONICS, INC.,

Petitioners

Vv.

MarTIN-MARIETTA CORPORATION, WESTINGHOUSE

ELEcTRIC CORPORATION, MCDONNELL AIRCRAFT

CORPORATION and INTERNATIONAL TELEPHONE &

TELEGRAPH CORPORATION,

Respondents

SUPPLEMENTAL BRIEF FOR RESPONDENTS

This brief is filed pursuant to Rule 41(5) of the

Supreme Court Rules to invite this Court's attention

to an opinion in a case related to this one, issued

August 27, 1973, subsequent to the filing of respond-

ent’s brief herein.

The August 27 opinion is in the Seventh Circuit case

involving the same patent here in suit, referred to at

pages 5 and 6 of respondents’ brief in opposition,

namely Technograph Printed Circuits, Ltd. v. Methode,

Tne. (hereinafter Methode). A copy of the opinion is

2

reproduced in a separate appendix filed with petition-

ers reply brief (Petition A67).

The unanimous Seventh Cireuit opinion agrees with

the Fourth Circuit opinion herein, in holding plaintiffs

collaterally estopped to retry the valdity of the involved

patent. Indeed, the Seventh Cireuit found it unneces-

sary to discuss most of the contentions made before

them because it agreed with the discussion thereof hy

the Fourth Cireuit hereinbelow. The Seventh Circuit

said:

“We agree with Judge Widener and the Fourth

Cireuit, which considered virtually the same con-

tentious made here by the plaintiffs for the nen-

application of Blonder-Tongue.”’ (Petition A 67,

72).

Additionally, the Seventh Cireuit panel expressly

considered the holding by another panel of the same

Cireuit in Bourns, Ine. v. Allen-Bradley Co., (herein-

after Bourns), 178 USPQ 193 (7 Cir. 1973), Petition

A57. The latter decision is asserted by petitioners

here to be in conflict with the Fourth Circuit decision

hereinbelow (Petition 2, 25-4). Petitioners’ position

with respect to Bowrns was found to be without merit

by the Seventh Cireuit, which said:

“Subsequent to oral argument, plaintiffs urged

by letter that we consider our recent decision in

Rourns, Ine. v. Allen-Bradley Co., Nos. 72-1222

and 72-1223 (June 14, 1973), where in an opinion

by Mr. Justice Clark, sitting in the Seventh Cir-

cuit by designation, we held that Blouder-Tougue

does not apply to claims not litigated in the prior

case. Plaintiffs have argued that Bendic adjudi-

cated the invalidity of method claims 4, 5, 10, 14,15

and 16 of °697 and that in the present cases claims

11. 12 and 13 are also involved. Towever, prior to

the trial before Judge Will, the parties agreed to

finding of fact No. 28 which reads:

3

‘Claims 11, 12 and 18 are basically the same as

claim 10 except for the specifie means of print-

ing; they are contingent upon claim 10 and will

cither stand or fall with claim 10.°

“Even without the stipulation, a reading of

claims 10, 11, 12 and 13 demonstrates the complete

dependence of 11, 12 and 13 upon claim 10,

* Furthermore, the same contention was made in

the Fourth Circuit proceeding where the District

Court found plaintiffs had there conceded that,

although the Martin-Marietta case involved ¢laims

4,5, 10, 14, 15 and 16, the issues in both cases were

‘identical’, 340 F. Supp. at 425. That fact was

not contested on appeal. 474 F.2d at 802.

‘Under all of these circumstances the invalidity

of claims 11, 12 and 13 were established by

Beudie.”” (Petition AGT, 72-3).

Petitioners have requested this Court, by motion

dated August 14, 1973, to delay its consideration of

the petition herein pending decision by the Seventh

Cireuit and by the Court of Claims, asserting the pos-

sibility of conflict between these courts and the courts

below. The decision in the Seventh Cireuit has new

been handed down and is fully in accord with the deci-

sious below. It is not known when the Court of

Claims may act on this case. Respondents feel it

unnecessary otherwise to comment on petitioners’

request.

Epwarp F. Mchir, Jr.

Wintitiam BE. SCHUYLER, JR.

Counsel for Respondent

WESTINGHOUSE ELECTRIC

CORPORATION

1000 Connecticut Avenue

Washington, D.C, 20056