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

> Briefs, arguments, decisions, and more.

URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385607_0709%3A3

## Record

- **Collection:** Supreme Court brief
- **Document type:** Appendix
- **Published:** January 1, 1973
- **Citation:** 414 U.S. 880

## Text

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)

|
|

:

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

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385607_0709%3A3. Public record. Not legal advice.