Opposition Brief — Bourns, Inc. v. Allen-Bradley Co.

Supreme Court of the Gnited States

Ocroser Term, 1973

No. 73-643

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.,

Respondents.

BRIEF IN OPPOSITION TO PETITION FOR

WRIT OF CERTIORARI

Of Counsel DONALD J. SIMPSON

HILL, SHERMAN, Lewis T. STEADMAN

MERONI, Gross & SIMPSON 53 West Jackson Boulevard

53 West Jackson Blvd. Chicago, Illinois 60604

Chicago, Illinois 60604 Attorneys for Respondents TRW Inc.,

Bunker-Ramo Corporation, Weston

Instruments, Inc., and

Fairchild Camera § Instrument Corp.

Of Counsel REGINALD K. BarLey

MASON, KOLEHMAINEN, CLEMENS HuFMANN

RaTHBURN & Wyss 20 North Wacker Drive

20 North Wacker Drive Chicago, Illinois 60606

Chicago, Illinois 60606 Attorneys for Respondent Beckman

Instruments, Ino.

Of Counsel Rotr O. STaADHEIM

ARTHUR H. SEIDEL HAIGHT, Horetpt & Davis

QUARLES, HERRIOT, CLEMONS, 141 West Jackson Boulevard

TESCHNER & NOELKE Chicago, Illinois 60604

780 N. Water Street Attorneys for Respondent

Milwaukee, Wisconsin 53202 Allen-Bradley Company

TWENTIETH CENTURY PRESS, CHICAGO 60606

IN THE

Supreme Court of the Anited States

Ocroser Term, 1973

No. 73-643

BOURNS, INC. and MARLAN E. BOURNS,

Petitioners,

v.

ALLEN-BRADLEY COMPANY,

BECKMAN INSTRUMENTS, INC.,

THE BUNKER-RAMO CORPORATION,

FAIRCHILD CAMERA & INSTRUMENT CORP.,

TRW INC., and

WESTON INSTRUMENTS, INC.,

Respondents.

BRIEF IN OPPOSITION TO PETITION FOR

WRIT OF CERTIORARI

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OPPOSERS’ RESTATEMENT OF

QUESTION PRESENTED

Was the Court of Appeals of the Seventh Circuit correct

in applying the collateral estoppel rule retrospectively in

the present patent case, as it has uniformly been applied

in other Circuits in patent cases, based on the decision by i

this Court in Blonder-Tongue Laboratories, Inc. v. Univer- '

sity of Illinois Foundation, 402 U.S. 313 (1971)? ¢

STATEMENT OF THE CASE

The Statement of the Case as set forth by Petitioners is

generally correct insofar as it relates to facts, with the

principal exceptions that (1) there has been no evidence

whatever adduced in this case as to why Petitioners dis-

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missed their appeal in the Eighth Circuit in the Dale Elec-

tronics, Inc. case, nor any evidence relating in any way to

their reliance on Triplett v. Lowell, 297 U.S. 638, and (2)

Respondents wrongly omit the fact that Defendant Beck-

man Instruments specifically raised the defense of collateral

estoppel in its original Answer, long before Blonder-

Tongue. It is noted that much of Petitioners’ Statement of

the Case is merely an advancement of arguments and not

facts. Respondents disagree with such arguments.

ARGUMENT

I. The Blonder-Tongue Rule By Its

Nature Was Made Retrospective.

This Court clearly indicated the appropriateness of retro-

spectively applying the collateral estoppel rule in the

Blonder-Tongue case itself. There the District Court for

the Southern District of Iowa ruled the patent invalid and

that decision was affirmed by the Court of Appeals for the

Eighth Circuit. The University of Dlinois Foundation

thereafter fully tried a similar suit in the Seventh Circuit

against Blonder-Tongue Laboratories, Inc. where validity

and infringement were found. This Court thereupon

granted certiorari and subsequently returned the case to the

Northern District of Illinois to permit Defendant to amend

its Answer there to plead for the first time the defense of

collateral estoppel and to move for Summary Judgment

based thereon. Retrospectivity was clearly implicit in that

ruling, in the subsequent grant of Summary Judgment on

remand, 334 F. Supp. 47, its affirmance, 465 F. 2d 380, and

the denial of certiorari, 93 S.Ct. 559 (1972).

1‘. There Was No Demonstrated Reliance By Petitioners

Upon The Triplett Rule When They Dismissed Their

Appeal In Bourns v. Dale.

The Petitioners contend they relied upon Triplett v.

Lowell, 297 U.S. 638 (1936), when they commenced the

present suit and dismissed their appeal in Bourns, Inc. et

EN NALA TN REF SRE

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al v. Dale Electronics, Inc., 308 F. Supp. 501 (D. Neb. 1969),

which held the patent in suit invalid. They further contend

that a retrospective application of principles of collateral

estoppel, as adopted in Blonder-Tongue, works an unfair

hardship upon them in view of such reliance. However, .

Plaintiffs have never offered any evidence establishing such

a reliance. Therefore, the argument, based upon a reliance,

collapses, and the Petition should be denied.

No evidence was offered the District Court that Bourns

had, in fact, relied upon Triplett. On appeal, Justice Clark

noted that there was no reliance:

«*** They suggest that they abandoned the Dale ap-

peal in reliance on the Triplett rule. It may be that in

some situations reliance on Triplett should relieve a

patentee from the consequences of the Blonder-Tongue

decision’s new collateral estoppel rules. But the cir-

cumstances surrounding the Dale litigation, particu-

larly the large potential recovery and the time and

effort already expended, convince us that appellants

would have pursued their appeal regardless of the

Triplett rule had they held any reasonable expectation

of ultimate success. Since appellants abandoned their

appeal because they saw no reasonable chance of pre-

vailing on the merits, we believe it equitable both as a

general matter and specifically under the Blonder-

Tongue decision to apply the estoppel rule established

in that decision.” (A-12, 13)

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There simply is no evidence in the record, by way of testi-

mony or otherwise, that there was any reliance upon

Triplett in dismissing the Dale appeal. There is only the

completely unsupported contention made in Petitioners’

briefs. The lack of such evidence is not an inadvertence.

Respondents have brought attention to the lack in prac-

tically every stage of the proceedings.

In fact, Petitioners’ dismissal of the Dale appeal was

clearly predicated on the realization that there most cer-

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tainly would be an affirmance, for they had been soundly

defeated in the Nebraska District Court. Any realistic op-

portunity for a reversal would undoubtedly have been pur-

sued, for under the rules of comity existing before Blonder-

Tongue a decision in Dale sustaining patent claims would

have matterially enhanced Petitioners present case, as con-

trasted to the Dale unappealed decision invalidating the

claims.

There being no demonstrated reliance upon Triplett in

dismissing the Dale appeal, but instead an adverse deter-

mination below and circumstances militating against a

reliance, the Petition should be denied because a basic

premise for Petitioners’ argument is lacking.

III. Consideration of the Factors Stated in Chevron Oil,

Which are Cited by Petitioners, Do Not Support The

Petition.

Page 6 of the Petition quotes factors for considering a

possible non-retroactive application of a decision of this

Court. The first factor is that there must be a new principle

of law overruling past precedent, or of first impression

whose resolution was not clearly foreshadowed. The prin-

ciple of collateral estoppel utilized in Blonder-Tongue is

certainly not new, but rather a well-established one of ever-

spreading application. Conversely, the doctrine of mutuality

of estoppel, upon which Triplett rested, has been under fire

and giving way to collateral estoppel principles in many

fields of law for many years. It was to be expected that the

patent law would be similarly treated, and the demise of

Triplett could be anticipated. In fact the demise was antic-

ipated by the Respondent Beckman which pleaded such

estoppel in its original Answer long before Blonder-Tongue

was decided. This Court also noted in the Blonder-Tongue

decision the general erosion in confidence in Triplett v.

Lowell, 402 U.S. 313, p. 318, and footnote 5. Hence, the

first factor in Chevron is not satisfied.

The second Chevron factor is to weigh the merits in each

case as to whether retrospective operation will further or

retard operation of the rule in question. Purposes of collat-

eral estoppel, as discussed in Blonder-T ongue, include elim-

ination of the expense of litigation of issues already decided

following a full and fair opportunity to litigate, elimination

of successive litigation of the same issue, elimination of

harrassment by a patent holder through repeated litigation,

elimination of the pristine character of mutuality of estop-

pel, ridding court dockets of cases involving already de-

cided matters, and improving economic factors in patent

litigation. All these goals are met by applying a collateral

estoppel in the present case, wherefore consideration of the

second Chevron factor is adverse to Petitioners.

The third factor is to weigh the equities between the

parties of the instant case. Since Petitioners have had a

full and fair opportunity to litigate their patent in the Dale

case which they brought in a forum they selected there is :

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no inequity in binding them to the decision there. Judge

MeMillen in the District Court found the equities against

Petitioners, stating:

“*** The equities in this matter militate heavily against

the plaintiffs. They have had the benefit of their patent :

since 1957. They have filed several suits to enforce it,

all of which were settled beneficially to the plaintiffs. |

They elected to file yet another suit in the Nebraska

federal court. They left that suit pending for seven

years in a jurisdiction which had no backlog. They had

ample time for nationwide discovery and taking depo-

sition testimony. They went to trial and lost on the

merits after a full and fair hearing. They abandoned

their appeal shortly before filing the case at bar in

which they hoped, by a class action, to recover damages

far in excess of the million dollars or so sought in

Nebraska. They had enjoyed the benefits of a patent

for almost thirteen years before their come-uppance.

In the opinion of this court they had not been treated

unfairly by the law.” (A-6, 7)

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Clearly, none of the factors for limiting retrospective

application of the collateral estoppel rule are satisfied.

IV. None of the Considerations for Granting a Review on

Oertiorari, as Indicated in Rule 19 of this Court, Are

Present.

(A). The decision below is not in conflict with any re-

ported patent case. To the contrary, Blonder-Tongue has

been uniformly applied on a restrospective basis by the

U. 8. Court of Claims and by every one of the many U. 8.

Courts of Appeal facing the question, and the present case

is completely in step with them. Attention is drawn to the

following rulings, in every one of which the collateral estop-

pel rule was retrospectively applied:

Blumcraft of Pittsburgh v. Architectural Art Mfg.

Co., et al., 337 F. Supp. 853 (D. C. Kan. 1972) ;

affirmed at 459 F’. 2d 482 (10th Cir. 1972)

Blumcraft of Pittsburgh v. Kawneer Co., Inc., 482

F, 2d 542, 178 USPQ 513 (5th Cir. 1973)

Monsanto v. Dawson Chemical Co., 443 F. 2d 1035

(5th Cir. 1971)

Sampson v. Ampex Corporation, 478 F. 2d 339,

178 USPQ 65 (2nd Cir., May 23, 1973) wherein

plaintiff, Sampson, abandoned an appeal against

a first defendant (RCA) and continued to prose-

cute Ampex, Blonder-Tongue was then decided,

and collateral estoppel was applied retrospec-

tively.

Technograph Printed Circuits, v. Martin-Marietta

Corp., 474 F. 2d 800 (4th Cir. 1973), Cert. Den.

Oct. 9, 1973.

Technograph Printed Circuits, Ltd. v. Methode

Electronics, and Class, 179 USPQ 206 (7th Cir.

Aug. 27, 1973)

forn

Technograph v, United States, No. 127-62, U. 8.

Court of Claims, Oct. 17, 1973, opinion attached

as Appendix hereto.

Wahl v. Vibranetics, 474 F. 2d 971 (6th Cir. 1973)

(B) The decision below is not in conflict with any deci-

sion of this Court. To the contrary, it closely follows and

clearly applies Blonder-Tongue by investigating and deter-

mining whether Respondents had a fair and full op-

portunity in Dale to litigate the issue of patent validity, all

within the guidelines discussed in Blonder-Tongue.

(C) The decision below does not decide an important

question of federal law that has not been, but should be,

determined by this Court. Instead, it applies the collateral

estoppel doctrine precisely as applied by this Court in

Blonder-Tongue.

CONCLUSION

Under the circumstances, there is no reason to invoke

the time of this Court on the question presented in the

Petition.

Of Cownsel DonALD J. Simpson

Hit, Suenman, Lewis T. STRADMAN

Meron!, Gross & Simpson 53 West Jackson Boulevard

53 West Jackson Blvd. Chicago, Illinois 60604

Chicago, Illinois 60604 Attorneys for Respondents TRW Inc.,

Bunker-Ramo Corporation, Weaton

Inatrumenta, Ino., and

Fairchild Camera & Instrument Corp.

Of Counsel ReoinaLp K, Barry

MASON, KOLEHMAINEN, CLEMENS HUFMANN

Ratusurn & Wyss 20 North Wacker Drive

20 North Wacker Drive Chicago, Illinois 60606

Chicago, Illinois 60606 Attorneys for Respondent Beokman

Instruments, Ino.

Of Counsel Ror O. Stapuem

Arruur H. Srive. Haiont, Horenpr & Davis

QUARLES, Herriot, CLEMONS, 141 West Jackson Boulevard

TESCHNER & NoeELKE Chicago, Illinois 60604

780 N. Water Street Attorneys for Respondent

Milwaukee, Wisconsin 53202 Allen-Bradley Company

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APPENDIX

IN THE UNITED STATES COURT OF CLAIMS

No. 127-62

(Decided October 17, 1973)

TECHNOGRAPH PRINTED CIRCUITS, LTD., AND

TECHNOGRAPH PRINTED ELECTRONICS, INC. v.

THE UNITED STATES

Sidney Bender, attorney of record, for plaintiffs. Aaron

Lewittes, Leventritt Lewittes & Bender, of counsel.

Michael W. Werth, with whom was Acting Attorney Gen-

eral Irving Jaffe, for defendant.

Before Cowen, Chief Judge, LaramorE and Duvurresz,

Senior Judges, Davis, SkeEuron, and Nicnots, Judges.

OPINION

Per Curiam: This is a patent suit under 28 U.S.C. § 1498,

involving U.S. Patent 2,706,697. After denial of defendant’s

pre-trial motions for summary judgment (TZechnograph

Printed Circuits, Lid. v. United States, 177 Ct. Cl. 919, 370

F. 2d 571 (1966) ; id., 178 Ct. Cl. 543, 372 F. 2d 969 (1967) ),

the case went to trial on the issue of validity before former

Trial Judge James F. Davis. In a decision filed March 2,

1970 (including opinion, findings and recommended con-

clusion of law), he concluded that the disputed claims of

patent ’697 are invalid for obviousness under 35 U.S.C.

§ 103. 164 U.S. P. Q. 584. Plaintiff excepted to this decision,

briefs were filed, and oral argument was had before the

court in December 1970.

Rome

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Before a decision was rendered, the Supreme Court

handed down, on May 3, 1971, its ruling in Blonder-Tongue

Laboratories, Inc. v. University of Illinois Foundation,

402 U.S. 313. Very shortly thereafter, we asked for the

filing of additional briefs on the applicability of that deci-

sion to this case since there had been a previous holding of

invalidity with respect to patent ’697 in Technograph

Printed Circuits, Ltd. v. Bendix Aviation Corp., 218 F.

Supp. 1 (D. Md. 1963), aff’d per curiam, 327 F. 2d 497

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

were filed by both sides.

We have held the case pending decisions in the Fourth

and Seventh Circuits (in litigation by plaintiffs against

private parties) on precisely the same Blonder-Tongue

issue with respect to patent 697 and the impact of Bendix

Aviation Corp., supra. Decisions have now been rendered

in both circuits at the trial and appellate levels. These rul-

ings are adverse to plaintiffs, holding that under Bonder-

Tongue the plaintiffs are estopped by Bendix from contest-

ing the validity of the relevant claims of patent 697. In the

Fourth Cireuit, Judge Watkins so ruled (in March 1972)

in the District Court for the District of Maryland. Tech-

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

340 F. Supp. 423. This was affirmed by the Court of Appeals

in February 1973. Technograph Printed Circuits, Ltd. v.

Martin-Marietta Corp., 474 F. 2d 798. In the Seventh Cir-

cuit, Judge Will made the same ruling (in May 1972) in

the Northern District of Illinois. Technograph Printed Cir-

cuits, Ltd. v. Methode Electronics, Inc., 194 U.S.P.Q. 297.

This decision was recently affirmed (on August 27, 1973)

by the Court of Appeals. Technograph Printed Circuits,

Ltd. v. Methode Electronics, Inc., C.A. 7, Nos. 72-1741,

72-1742, 72-1743, 72-1744, and 72-1745.

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We have considered the extensive briefs and written

arguments of the parties on the Blonder-Tongue question,’

and the opinions of Judges Watkins and Will and of the

Courts of Appeals for the Fourth and Seventh Circuits.

We agree fully with the holdings that under Blonder-

Tongue plaintiffs are estopped by the Bendix decision.

Plaintiffs make the same arguments before us as were made

im the Fourth and Seventh Circuit litigations. There is no

need for further briefing or for oral argument, and it

would be needless repetition for us to spread out again

the persuasive reasons given in the opinions filed in the

other courts. On the basis of those opinions, we hold plain-

tiffs estopped from contesting the invalidity of all the claims

of patent 697 which are in issue. It follows that there

can be no recovery under patent 697 and the petition with

respect thereto is dismissed.

Trial Judge Davis’ opinion, in footnote 1, states that at

that time there was still in issue another patent, No.

2,662,957, and that the parties had agreed to defer trial on

the 957 patent until this court’s ruling on patent ’697. If

plaintiffs still wish to proceed in this court on patent ’957,

they should so inform the court within thirty (30) days of

this date. If such notification is given, the case will be

remanded to a trial judge for further appropriate proceed-

ings with respect to patent 957; otherwise the petition will

also be dismissed as to that patent.

1 After the decision of the Fourth Circuit, plaintiffs filed an

additional paper challenging that decision.

A ats hs eh