Petition for Writ of Certiorari — Bourns, Inc. v. Allen-Bradley Co.

No.

IN THE

Supreme Court of the Anited States

OctoserR Term 1973

BOURNS, INC. and MARLAN E. BOURNS,

Petitioners,

Vv.

ALLEN-BRADLEY COMPANY, BECKMAN

INSTRUMENTS, INC., THE BUNKER-RAMO

CORPORATION, FAIRCHILD CAMERA &

INSTRUMENT CORP., TRW INC. and WESTON

INSTRUMENTS, INC., on behalf of themselves and

as representatives of others similarly situated,

a Ee a ne

Respondents.

DENOTE LF OIE LEE DEE OG SS

PETITION FOR WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

PAROS RE AOR SFPD DD ORR

Petitioners, Bourns, Inc. and Marlan E. Bourns, pray that

a Writ of Certiorari be granted to review the portion of the

judgment of the United States Court of Appeals for the

Seventh Cireuit entered in the above entitled cause on

June 14, 1973, affirming a part of the decision of the Dis-

trict Court.

OITATIONS TO OPINIONS BELOW

The District Court’s opinion is reported at 348 F. Supp.

554 (N.D. Ill. 1972) and is printed at A-1.'

The opinion of the Court of Appeals dated June 14, 1973,

is reported at 480 F.2d 123 and is printed at A-8. The

decree of the Court of Appeals. entered on June 14, 1973,

appears at A-24. The order of the Court of Appeals deny-

ing a rehearing appears at A-25.

JURISDICTION

The Judgment of the United States Court of Appéals for

the Seventh Circuit affirming a portion of a judgment of

the United States District Court for the Northern District

of Illinois, Eastern Division, was entered June 14, 1973.

The Court of Appeals denied a timely petition for rehear-

ing on July 17, 1973. The jurisdiction of this Court is in-

voked under 28 U.S.C. § 1254(1).

QUESTION PRESENTED

When this Court announces a change in the law, but does

not discuss or decide the matter of retroactivity or prospec-

tivity, is its silence to be construed as a mandate for retro-

spective application of the change?

STATEMENT OF THE CASE

Petitioners Bourns, Ine. and its president Marlan EF.

Bourns filed this class action for patent infringement on

August 11, 1970. Jurisdiction of the District Court was

founded on 28 U.S.C. §1338(a). Bourns, Ine. is a Cali-

fornia corporation and is the exclusive licensee of Marlan

Bourns’ United States Patent No. 2,777,926.

1 The abbreviation “A” is used herein to designate the Appendix

bound with this Petition.

ee ee ee

Respondents are six large corporations named in the

complaint as defendants in their own behalf, and as repre-

sentatives of a class consisting of all others who have in-

fringed the '926 patent. In their answers respondents

denied infringement and raised the traditional defense of

invalidity.

Prior to the filing of this suit in the Northern District

of Illinois, petitioners had brought suit on the same patent

in Nebraska against Dale Electronics, Inc. In its judgment,

entered in January, 1970, the Nebraska Court held claims

1, 2, 11, 14, 15, 16 and 20 of the ’926 patent invalid for

obviousness under 35 U.S.C. 103.? Petitioners filed a notice

of appeal from that judgment, but after a change of counsel

decided to dismiss the appeal and bring the present class

action in the Seventh Circuit. This decision was based upon

the then-prevailing rule of Triplett v. Lowell, 297 U.S. 638

(1936), that a patentee is not estopped to relitigate patent

claims once held invalid against a different defendant.

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OI EP EN Rees eS

Shortly after the filing of the present suit, however, this

Court on October 19, 1970 granted certiorari in Blonder-

Tongue Labs., Inc. vy. University of Illinois Found., 400

U.S. 864, and decided, sua sponte, to consider whether the

rule of Triplett v. Lowell should be adhered to. In other

words, the very rule upon which petitioners had relied, in

abandoning their appeal in the Dale case and in filing this

suit, was to be re-examined.

O18 STROSS F

On May 3, 1971 this Court handed down its decision in

Blonder-Tonque Labs., Inc. v. University of Illinois Found.,

402 U.S. 313 (1971), holding that Triplett “should be over-

ruled 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.

2 Bourns, Inc. v. Dale Elec., Inc., 308 F. Supp. 501 (D. Neb.

1969).

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At that point five of the six respondents amended their

answers to plead collateral estoppel as a defense, and all

joined in a motion for summary judgment on the ground

that petitioners were collaterally estopped by the judgment

in Bourns v. Dale, supra, from asserting the '926 patent.

On February 7, 1972, the District Court granted the mo-

tion and entered judgment for respondents. The effect of

that decision was to estop petitioners as to all claims, not

just those enumerated in the Dale judgment. As to peti-

tioners position that they had been denied the Blonder-

Tongue requisite of a “full and fair opportunity to litigate”

through their reliance on the prevailing rule of Triplett, the

District Court held there were “rumblings” of a change (A-

2). As to the position that the retrospective application of

Blonder-Tongue would be unjust, the District Court held

that “justice in this matter is pre-empted by the Blonder-

Tongue decision itself,” (A-6) and petitioners’ reliance on

pre-Blonder-Tongue decisions when abandoning their ap-

peal “is contrary to the holding of that controlling decision

which abrogated the prior law.” (A-5) Petitioners ap-

pealed.

On June 14, 1973 the Court of Appeals for the Seventh

Circuit reversed in part and affirmed in part. With respect

b to the claims not asserted in the Dale case and not men-

tioned in the judgment entered in that case, the Court re-

versed and held there was no estoppel, in view of the

classical rule that (A-10):

[A prior judgment] operates as a collateral estoppel as

to, but only as to, those matters or points which were

i in issue or controverted and upon the determination of

1 which the initial judgment necessarily depended. 1 B

; Moore’s Federal Practice 3777 (2d ed. 1965).

: The Court of Appeals affirmed with respect to the claims

: specifically held invalid in the Dale suit, with Judge Pell

; dissenting. The majority adopted the view of the District

Meteors eesememaeneer en go memeionnsrawnneromomnme rinnecans eens

Court that “the Supreme Court in Blonder-Tongue im-

plicitly rejected reliance on its prior decision in T'riplett v.

Lowell, swpra, as an adequate basis for avoiding the gen-

eral rule fashioned in the later decision.” (A-11) As Mr.

Justice Clark (sitting by designation) explained for the ma-

jority, “in overruling T'riplett, the Bonder-Tongue Court

did not see fit to rule prospectively, though it has so limited

recent rulings in other contexts where retrospective appli-

cation would work hardship and inequity.” (A-12) In other

words, the Court of Appeals concluded that because this

Court did not specify that Blonder-Tongue was to be ap-

plied prospectively, it must have meant that the overruling

of Triplett was a matter for retrospective application in all

CABCS,

Judge Pell took sharp issue with this conclusion. As he

pointed out (A-18) :

** * When new law is established or, more importantly,

when existing law is changed, it always is retrospective

us to the particular litigant who is unsuccessful. This

is inherent, for courts do not customarily give advisory

opinions. This is a far ery though from inferring that

the decision is retrospective as to other litigants who

were relying on the pre-existing law.

The question presented here is thus clearly focused by the

majority and dissenting opinions: Is the failure of this

Court to rule prospectively to be understood, conversely, as

a direction for retrospective application?

REASONS FOR GRANTING THE WRIT

Retroactivity has become, in the context of the work of the

Supreme Court, one of the central problems of Federal pro-

cedure, In Linkletter v. Walker, 381 U.S. 618, 620 (1965),

this Court “granted certiorari in order to settle what has

become a most troublesome question in the administration of

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justice.” In the decade since Linkletter, the Court has de-

cided the issue of retroactivity in more than thirty cases.

Although the bulk of the litigation has been in the criminal

field, the Court has not neglected the civil area. The result

has been the formulation of a set of guidelines which were

restated most recently in Chevron Oil Co. v. Huson, 404

U.S. 97, 106-07 (1971):

In our cases dealing with the nonretroactivity ques-

tion, we have generally considered three separate

factors. First, the decision to be applied nonretroac-

tively must establish a new principle of law, either by

overruling clear past precedent on which litigants may

have relied, see, e.g., Hanover Shoe v. United Shoe

Machinery Corp., supra, at 496, or by deciding an issue

of first impression whose resolution was not clearly

foreshadowed, see, e.g., Allen v. State Board of Elec-

tions, supra, at 572. Second, it has been stressed that

“we must ... weigh the merits and demerits in each

case by looking to the prior history of the rule in ques-

tion, its purpose and effect, and whether retrospective

operation will further or retard its operation.” Link-

letter v. Walker, supra, at 629. Finally, we have

weighed the inequity imposed by retroactive applica-

tion, for “[w]here a decision of this Court could produce

substantial inequitable results if applied retroactively,

there is ample basis in our cases for avoiding the ‘in-

justice or hardship’ by a holding of nonretroactivity.”

Cipriano vy. City of Houma, supra, at 706.

Last term, this Court found that the Chevron factors dic-

tated a holding of nonretroactivity in a noncriminal, consti-

tutional case. Lemon v. Kurtzman, 411 U.S. 192 (1973).

It might have been hoped that, under Chevron, the lower

courts could in most instances finally determine questions

of retroactivity, with this Court finding it necessary to act

only in cases of extreme intrinsic significance. But that

RT NN Rel ill PIG 8 EG NERS Wi Oe

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hope, in view of the instant majority opinion, is clearly mis-

placed. For the majority has chosen to regard this Court’s

silence as a mandate for retroactivity.

Thus there is presented here an important federal ques-

tion which should be settled by this Court. The importance

of the matter is largely due to the frequency with which it

will arise. If silence is to be equated with retroactivity,

then the parties (and amici) to a large proportion of the

cases coming before this Court—those in which the Court

may overrule a clear past precedent or decide an issue of

first impression—will surely be ill-advised if they fail to

brief and argue and urge resolution of the issue of retro-

activity. To the extent it may be thought that the approach

of the majority below represents a single isolated instance,

it should be pointed out that at least the Ninth Circuit

seems to have embraced identical reasoning. See Reed v.

United States, 432 F.2d 205 (9th Cir. 1970). And it is not

unreasonable to expect to find other courts following this

approach, particularly in view of the frequency with which

the issue of retroactivity must be considered.

The approach of the majority below is also in clear con-

flict with applicable decisions of this Court. If silence is to

be equated with retroactivity, one might well ask why this

Court took the trouble to formulate the Chevron guidelines.

Why, indeed, did this Court find it necessary to decide

Lemon v. Kurtzman last term? In Lemon I (403 U.S. 602)

this Court was silent on the retrospective effect of its deci-

sion. Under the view of the instant majority, then, the

Three-Judge District Court on remand should not have

permitted state reimbursement to schools for services ren-

dered prior to Lemon I, But it did, and this Court affirmed

in Lemon I],

APF NL UIP MS OO AP RIB AIA

It is no answer to say, as did the majority below, that

this Court has occasionally seen fit to rule prospectively, as

in Phoenix v. Kolodziejski, 399 U.S. 204 (1970); Cipriano

v. City of Houma, 395 U.S. 701 (1969); and Allen v. State

Board of Elections, 393 U.S. 544 (1969). Those cases are

unique in that the significant hardships which would have

flown from retrospective application of the new ruling

were obvious, and this Court required no airing, by a lower

court, of the Chevron factors.

It would seem that the answer to the question presented

here is implicit in numerous decisions of this Court, includ-

ing Lemon and Chevron. But because the Court has in a

few cases seen fit to rule prospectively in the first instance,

at least some confusion exists as to the effect of its silence.

The disagreement here between the majority and the dis-

sent is an obvious manifestation of that confusion. Unless

the Court clarifies the matter, the effect could be the un-

dermining of the body of law developed in decisions such

as Linkletter, Chevron, and Lemon.

The majority below simply presumed that this Court

intended Blonder-Tongue to be applied retroactively in all

cases. It neither mentioned Chevron nor pursued the

analysis developed in that decision and its forerunners. Had

it done so, it must necessarily have reached the conclusion

of Judge Pell in dissent, whose opinion argues petitioners’

position on the merits better than their counsel can. As he

concluded (A-21):

Applying the tests of Chevron to the present case:

(a) a new principle of law was established by overrul-

ing clear past precedent on which litigants not only

may but did in fact rely; (b) since litigants who have

instituted lawsuits in reliance upon Triplett prior to

OL INE ORE ADT PCPA WR ORR Deere

Blonder-Tongue must of necessity be relatively limited

in numbers, retrospective application would scarcely

seem to further the operation of the principle enunci-

ated; and (c) there is an inherent inequitable result if

the principle is applied retroactively with injustice

being avoided by a holding of nonretroactivity.

Petitioners respectfully pray that the Court take this

opportunity to make it clear that silence is not to be equated

with a holding of retroactivity.

Respectfully submitted,

Crype F. Wmu1an

Rosert L. Harmon

Hume, CLEMENT, Brinks,

Wiruian, Ops & Cook, Lp.

One First National Plaza—#5150

Chicago, Illinois 60670

Counsel for Petitioners

Francis X. Beytacu, Jr.

Notre Dame Law ScHoo.

Notre Dame, Indiana 46556

Of Counsel

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