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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition for Writ of Certiorari
- **Published:** January 1, 1973
- **Citation:** 414 U.S. 1094

## Text

LIBRARY
SUPREME COURT, VU. 8:

Supreme Court of the Unites states

Ocroszr Term, 1973

IN THE MICHAEL ROBAX. 3
DRUM Fire

No. 73- 644

ALLEN-BRADLEY COMPANY,

BECKMAN INSTRUMENTS, INC.,

THE BUNKER-RAMO CORPORATION,
FAIRCHILD CAMERA & INSTRUMENT CORP.,

TRW INC., and

WESTON INSTRUMENTS, INC.,

¥,

BOURNS, INC. and MARLAN E. BOURNS,

Petitioners

Respondents

PETITION FOR A WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS FOR THE
SEVENTH CIRCUIT AND APPENDIX

Of Counsel
MASON, KOLEHMAINEN,
RATHBURN & Wyss
20 North Wacker Drive
Chicago, Illinois 60606

Of Counsel
ARTHUR H. SEIDEL
QUARLES, HERRIOT, CLEMONS,
TESCHNER & NOELK=
780 N. Water Street

Milwaukee, Wisconsin 53202 4!len-Bradley Company

TWENTIETH CENTURY PRESS, CHICAGO 60606

RICHARD D. MASON
REGINALD K. BAILey
CLEMENS HUFMANN
20 North Wacker Drive
Chicago, Illinois 60606
Attorneys for Petitioner Beckman
Instruments, Inc.

DonaLp J. Smmpson
Lewis T. STEADMAN
HILL, SHERMAN, MERONI, Gross & SIMPSON
53 West Jackson Boulevard
Chicago, Illinois 60604
Attorneys for Petitioners TRW Inc.,
Bunker-Ramo Corporation, Weston
Instruments, Inc., and
Fairchild Camera § Instrument Corp.

RotF O. STADHEIM

HAIGHT, Horetpr & Davis
141 West Jackson Boulevard
Chicago, Illinois 60604

Attorneys for Petitioner

Bee SMES Sw , Vo ARAN ENE LI AMAT ON ORS NN a

TABLE OF CONTENTS

PETITION
PAGE
Grlmtons Below .ncccccccnscccecccsesccvevesevesss 2
DUI 6 0 0.0.0.6: 6.0.0.0:60046000600000 000050000006 2
Questions Presented .....ccccccccccccccccccccccece 3
Bhatomont of the Case ..ccccccvccccescccccccccccece 3
Reasons for Granting the Writ ..............eeee0e 7
CIE o dsccccdceccesndeccsececseccenasaccetcce 18
APPENDIX
PAGE
Bourns, Inc. and Marlan E. Bourns v. Allen-Bradley
Co., 480 F.2d 128 (7th Cir. 1978) ....ccceccccccces Al
Bourns, Inc. and Marlan E. Bourns v. Allen-Bradley
Co., 348 F. Supp. 554 (N.D. Ill. 1972) .............. A17
Bourns, Inc. and Marlan E. Bourns v. Dale Electron-
ics, Inc., 308 F. Supp. 501 (D. Neb. 1969) .......... A23

Certified Judgment of the District Court of the South-
ern District of Iowa dated June 26, 1969 in The Uni-
versity of Illinois Foundation v. Winegard Company,
De: GOED 6. 6-06 05 6064600 50560000655 00s Kae cies A56

Certified Judgment of the Eighth Circuit Court of
Appeals dated September 30, 1968 in University of
Illinois Foundation v. Winegard Company, Appeal
Wit DME 66 iin i510 060 Ors cin sevdeswencetereees A57

Opinion of the Seventh Circuit Court of Appeals in
Technograph Printed Circuits, Ltd. v. Methode Elec-
tronics, Inc., Nos. 72-1741, 72-1742, 72-1743, 72-1744,

72-1745 (Aug. 27, 1978) ...cccccccccsccccccccccecs A59
U.S. Constitution, Art. I, See. 8, Clause 8 ............ A68
SS UG Bee. RAGES ois vccccsvievesccessscciccesins A68
Be Cee ORs TNS 6 nc cncsecevenuseeecnssesesiesseetes A68

REP LEO ARIE RW RATE I By AY AENEAN OE TINT IL POU oF WAR ORLOD LIAS ERE LYRE IRI SAVE RRL,
(ad nlm 9

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SF EMS gt SO Ie pI D

PAGE
Ts cincbesesersssseccsvsccsensduces A68
Th den chsh snbaes bo raed cease edsesaves A69
ie. ide ccunks es bbees enon’ A69
eae ie es hknsedes4enensesedenees A70
Rule 141, Rules of Practice in Patent Cases ........... A70
Rule 142, Rules of Practice in Patent Cases ........... A70

Manual of Patent Examining Procedure (3rd ed. rev.
April 1973) Sec. 706.03(1) par. 1 ...........seeeees A71

TaBLe or Cases Crrep
Allegheny Steel & Brass Corp. v. Elting, 141 F.2d 148

DA ENED 3.600 scevsdcedbacccncceccsasecsens 18
Altvater v. Freeman, 319 U.S. 359, 63 8S. Ct. 1115
DE cGhscesutdceaebasihaexaseeeeecaseeatiae 15, 18

Blonder-Tongue Labs., Inc. v. Univ. of Illinois Foun-

dation, 402 U.S. 313, 91 S.Ct. 1434 (1971), remand-

_ ing, 422 F.2d 769 (7th Cir. 1970), on remand, 465

F.2d 380 (7th Cir. 1972), affirming per curiam, 334

F. Supp. 47 (N.D. Il. 1971), cert. den., 93 S.Ct. 559
re 2, 3, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 18

Blumcraft of Pittsburgh v. Architectural Art. Mfq.,
Inc., 337 F. Supp. 853 (D. Kan. 1972), aff’d per
curiam, 459 F.2d 482 (10th Cir. 1972) ....... 9, 10, 13,17

Blumcraft of Pittsburgh v. Kawneer, 178 USPQ 513

DR EE Gln OC ee Gel eb aweuteeoebes on 7
Bourns, Inc. v. Allen-Bradley Co., 480 F.2d 123 (7th
MEN ce cue cual eius Gu lugeseeaawievae ceenen 2
Bourns, Inc. v. Allen-Bradley Co., 348 F. Supp. 554
Se Oe EE noo on Vi casees seedktencaadteteueens 2,3
Bourns, Inc. v. Dale Electronics, Inc., 308 F. Supp. 501
Se EE -cveuwis veunanees 2, 4, 5, 6, 7, 13, 15, 16, 18

Bresnick v. United States Vitamin Corp., 139 F.2d 239
(2nd Cir. 1943)

In re Flint, 411 F.2d 1353 (CCPA 1969) ............ 16

mR Di a ERLE LIMOS EUR FR PIN LE | FS ROR ALY BY, RAR

— - entaatnd as
ee a v7

iii
PAGE

Hale v. General Motors Corp., 147 F.2d 383 (1st Cir.
PE ETC Te Tee TT TT rer rer 17

Illinois Tool Works, Inc. v. Brunsing, 378 F.2d 234
Se EK CD Stag ddccceneinbesvetouscssecueans 18

Kalo Inoculant Co. v. Funk Bros. Seed Co., 161 F.2d
981 (7th Cir. 1947), rev’d on other grounds, 333 U.S.
es Oe es I CED 0.66 sh bb ccooveruceesaaceas 18

| Kawneer v. Pittsburgh Plate Glass Co., 103 F. Supp.
See COU SA MND 060k cos cncaviasiciacssacse 18

M.O.S. Corp. v. John I. Haas Co., 375 F.2d 614 (9th
gee eas 17

Shatterproof Glass Corp. v. Guardian Glass Co., 462
ee Re GT CO BUD kn oc css cevnss covesacees 17

Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S.
Beery GP Te BUM CID 0 concen sunencacnsceessi 15, 17

Sterling Aluminum Prods., Inc. v. Bohn Aluminum &
Brass Corp., 298 F.2d 538 (6th Cir. 1962) ......... 18

Technograph Printed Circuits, Ltd. v. Bendix Aviation
Corp., 218 F. Supp. 1 (D. Md. 1963), aff’d 327 F.2d
497 (4th Cir. 1964), cert. den. 379 U.S. 826, 85 S.Ct.
SP SUD -ceuk seudaunwebaausesecaceoecednesiea st 10

Technograph Printed Circuits, Ltd. v. Martin-Marietta

Corp., 474 F.2d 798 (4th Cir. 1973) ............. 3, 8, 11 :
Technograph Printed Circuits, Ltd. v. Methode Elec- h
tronics, Inc., (7th Cir. 1973), affirming, 174 USPQ t
St NE 0 cGA Ng CdC cand Cea ssed sn cahacucetnaass 12 ;
Technograph Printed Circuits, Ltd. v. Packard Bell
Electronics Corp., 290 F. Supp. 308 (C.D. Cal. 1968) i
fevansdenadee snes i kusds¥ashens as deb eeresweeon: 9, 11 ‘

Univ. of Illinois Foundation v. Winegard Co., 271 F.
Supp. 412 (S.D. Iowa 1967), aff’d., 402 F.2d 125 (8th
Cir. 1968), cert. den., 394 U.S. 917, 89 S.Ct. 1191

RE RE eRe AA ES rate Aam snen ir mE mp mee 9, 10, 16
Young v. John McShain, Inc., 130 F.2d 31 (4th Cir.
SEE hat aGceak Ci ceUssbueccs bectedneen bonus seks 18

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Supreme Court of the Gnited States

Ocroser Term, 1973

No.

ALLEN-BRADLEY COMPANY,

BECKMAN INSTRUMENTS, INC.,

THE BUNKER-RAMO CORPORATION,
FATRCHILD CAMERA & INSTRUMENT CORP.,
TRW INC., and

WESTON INSTRUMENTS, INC.,

Petitioners
v.

BOURNS, INC. and MARLAN E. BOURNS,

Respondents

PETITION FOR A WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS FOR THE
SEVENTH CIRCUIT AND APPENDIX

Petitioner, Beckman Instruments, Inc., prays that a writ
of certiorari issue to review the decision of the United
States Court of Appeals for the Seventh Circuit, entered
June 14, 1973.

Petitioner, Beckman Instruments, Inc., files this petition
on its own behalf and as a representative Defendant. Peti-
tioners Allen-Bradley Company, The Bunker-Ramo Corpo-
ration, Fairchild Camera & Instrument Corp., TRW Ine. and
Weston Instruments, Inc. concur in this petition.

a a Sai er ie Se ee ee ee ei oe eee
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2

OPINIONS BELOW

The opinion of the Seventh Circuit (Al)' with respect
to which review is sought is reported at 480 F2d 123 (7th
Cir. 1973).

The district court’s decision (A17) from which the

appeal was taken is reported at 348 F.Supp. 554 (N.D. IIl.
1971).

Petitioners’ defense of Blonder-Tongue?® estoppel is based
on the opinion in Bourns, Inc. v. Dale Electronics, Inc., 308
F.Supp. 501 (D. Neb. 1969) (A23) and on the judgment
(App 86) in that case.

JURISDICTION

Jurisdiction is based on 28 USC See. 1254(1). The deci-
sion of the Court of Appeals sought to be reviewed was
entered June 14, 1973. Plaintiff’s timely petition for re-
hearing was denied July 17, 1973. Federal subject matter
jurisdiction derives from 28 USC 1338(a).

1“A” refers to the pagination of the appendix which forms part
of this petition. “App” refers to the pagination of the appendix
in the Court of Appeals for the Seventh Circuit in Appeals Nos.
72-1222 and 72-1223.

“Ex p.” refers to the page of the book of exhibits in the Court
of Appeals for the Seventh Circuit in Appeals Nos. 72-1222 and
72-1223.

2 Blonder-Tongue Labs., Inc. v. Univ. of Illinois Foundation,
402 U.S. 313, 91 S.Ct. 1434 (1971), remanding, 422 F2d 769 (7th
Cir. 1970), on remand, 465 F2d 380 (7th Cir. 1972), affirming per
curiam 334 F.Supp. 47 (N.D. Ill. 1971), cert. den. 93 S.Ct. 559
(1972), hereinafter referred to as Blonder-Tongue.

ee ee ee eG

3
QUESTIONS PRESENTED’

1. In a patent infringement action should the scope of
the estoppel resulting from a prior decision adverse to the
patentee be limited by the narrow technicalities of the
common law doctrine of collateral estoppel in accordance
with the Seventh Circuit’s ruling in this case, or should the
Blonder-Tongue estoppel rule have a broader scope as
declared by the Fourth and Tenth Circuits, two other
rulings of the Seventh Circuit, and the rulings of the Dis-
trict Court below and the District Court for the Central
District of California?

2. Under Blonder-Tongue does the owner of a patent
have the right to try as many patent infringement actions
as there are claims in the patent, even though the patent
owner had previously lost a patent infringement action in
which all of the patent claims had been put in issue, none
had been held valid and none had been reserved for future
adjudication?

STATEMENT OF THE CASE

On January 15, 1957, U.S. Patent No. 2,777,926 entitled
“Variable Resistor” and containing 21 claims was issued to
Marlan EF. Bourns,’ the individual Plaintiff in this litiga-
tion. Plaintiffs promptly charged many of their competitors
with infringement of this patent and eventually instituted
seven actions for infringement of the 926 patent. Five of
these actions were dismissed on terms satisfactory to
Bourns (App. 64-68). One of the two remaining actions,
namely Bourns, Inc. v. Dale Electronics, Inc., 308 F.Supp.

1 The questions here presented deal with the same legal problems
posed in questions 1 and 2 of the Petition for a Writ of Certiorari
in Technograph Printed Circuits Ltd, y. Martin-Marrietta Corp.,
No. 73-147 October Term 1973.

2 This patent is reproduced at Ex. pp. 1-6 and will hereinafter
be referred to as the 926 patent.

4
501 (D. Neb. 1969), was tried and decided with finality
against the plaintiffs (A23).

The Dale litigation commenced in 1962 and put the valid-
ity of the entire ’926 patent in issue by complaint (Ex
p. 149), answer and counterclaim (Ex p. 160). On May
29, 1967, after many years of pretrial discovery, the parties
filed amended pleadings which re-asserted that the validity
of all claims of the 926 patent were in issue (Ex pp. 173,
179, 126). In the Dale trial the evidence included 610 pages
of transcript and 522 exhibits. Bourns testified that “. . .
all those potentiometers [including those made by peti-
tioners] utilize the basic construction of the 926 patent...”
(Ex p. 190). The opinion of Judge Robinson, the trial judge,
states inter alia:

“. . . the statements of the inventor himself should
further show beyond doubt that the device! was not
patentable.” (A29)

“Plaintiff relies upon claims 1, 2, 11, 14, 15, 16 and 20
of the 926 patent. Defendant’s primary thrust centers
upon the validity of the ’926 patent. Defendant’s con-
tention, among others, is that this patent is obvious.”
(A25)

“In determining the validity of the patent this Court
must ascertain the essence and scope of the patent as
stated in the above mentioned claims.” (A25)

“The first question is then, what is the essence of the
patent.” (A26)

“From a reading of the allowed claims and the history
of the patent as it passed through the Patent Office it
seems apparent that the mounting holes are the ele-
ments [excepting claim 16] of the patent which the
Patent Examiner believed to be the essential fea-
ture... .” (A28)

1 Throughout this petition emphasis is added, unless otherwise
indicated.

IE MELE SIDR ONDE ALLL SAAR AA IDA ES TRIBE AE 0 wt PE EA

“This Court believes both interpretations require a
decision rendering the patent invalid.” (A28)

“Once having reached a conceptual rather than a math-
ematical formula type understanding of the nature of
the patent, ... this patent could not be declared valid.”
(A33)

“There is therefore no validity to claim 16 and the
926 patent is held to be invalid.” (A34)

The final decree in Dale reads in part as follows: (App 86)

“2, Claims 1, 2, 11, 14, 15, 16 and 20 of the United
States Patent No. 2,777,926 are invalid.”

“7, The Amended Complaint is dismissed with preju-
dice, and the Amended Counterclaim is sustained to
the extent indicated.”

Plaintiff’s seventh litigation on the 926 patent, C.A. No.
70-C-1992 in the Northern District of Illinois was instituted
under 28 USC 1338(a) on August 11, 1970 as a class action
naming petitioner and five other corporations as represen-
tative defendants. No class action order has yet been en-
tered. The complaint alleged infringement of the ’926
patent without specifying particular patent claims (App 4).
Petitioner Beckman answered on November 4th, 1970 that
the entire patent was invalid (App 9) and further alleged
in paragraph 30:

“Plaintiffs are barred and estopped from prosecuting
this action under the principles of res judicata and
estoppel by judgment because U.S. Patent No. 2,777,926
has been held invalid after a full trial on the merits in
a final decision as a result of a patent infringement
action instituted by Plaintiffs, said final decision being
reported as Bourns, Inc. and Marlan E. Bourns v. Dale
Electronics, Inc., 308 F.Supp. 501 (D. Neb. 1969).””

1 The other petitioners added an estoppel defense to their plead-
ings on May 28, 1971 (App. 30).

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On May 3, 1971 this Court decided Blonder-Tongue. In
June and July 1971 petitioners filed their motions for sum-
mary judgment based on Blonder-Tongue. Plaintiffs op-
posed this motion in its entirety and submitted a compre-
hensive brief and affidavits (App 90-149). Plaintiffs did
not oppose the summary judgment motion on the ground
that the 926 patent disclosed any inventive concept which
was not adjudicated in the Dale litigation.

Summary judgment was granted in an opinion which
emphasized the comprehensiveness of the patent validity
issue pleaded and tried in the Dale case as shown by the
following excerpts (A19,20) :

“Among other things, the court’s decision [in the Dale
case] says with respect to Patent No. 2,777,926: ‘...
the ’926 patent is held to be invalid.’ 308 F.Supp. at 507.

The pleadings in the Nebraska suit demonstrate that
both the plaintiffs and the defendant were litigating
the validity of the patent, not merely part of it... .”

“... they [Plaintiffs in the present action] have never
amended their complaint to allege that they were rely-
ing on the validity of those claims not specified by the
Nebraska court. We conclude that the Nebraska judg-
ment order is explained by the same procedures as
explains this particular defense raised by the plain-
tiffs: the court was referring to the claims alleged to
be infringed by a defendant’s product but had no inten-
tion of changing its decision of invalidity.”

Plaintiffs appealed from the summary judgment. With
respect to the 14 claims of the 926 patent not expressly
invalidated by the decree in the Dale case the appeal suc-
ceeded for two reasons. Firstly, the Seventh Circuit ap-
plied what it regarded as the strict common law require-
ments of collateral estoppel as follows (A3):

“...As Professor Moore teaches:

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[A prior judgment] operates as a collateral estoppel
as to, but only as to, those matters or points which
were in issue or controverted and upon the determina-
tion of which the initial judgment necessarily depended.
1B Moore’s Federal Practice 3777 (2d. ed. 1965) .. .”
(Parenthesis and emphasis by Seventh Circuit)

Secondly, the Seventh Circuit interpreted the opinion in
the Dale case by focusing on the statement therein that
“Plaintiff relies upon claims 1, 2, 11, 14, 15, 16 and 20”
(A2,3). From this and three other fairly similar state-

ments in the Dale opinion the Seventh Circuit concluded
(A3):

“. . . that where the court [for the District of Ne-
braska] referred to the ’926 patent as being invalid,
it was referring only to those claims specifically desig-
nated at the outset and restated in the final judgment.”

REASONS FOR GRANTING THE WRIT

Question 1

In Blonder-Tongue this Court concluded (402 U.S. 334, 91
S.Ct. 1445) that the patentee should be estopped if he “had
a full and fair chance to litigate the validity of his patent
in an earlier case.” Blonder-Tongue’s objective of prevent-
ing the “misallocation of resources” (402 U.S. 330, 91 S.Ct.
1443) by reducing the number of trials involving the same
patent was paraphrased as follows in Blumcraft of Pitts-
burgh v. Kawneer, 178 USPQ 513 (5th Cir. 1973) :

“Blonder-Tongue did not throw merely a jab at the
multiplicity of patent litigation; rather, it imtended a
knockout blow through the doctrine of collateral estop-
pel so that any time a patent was found invalid in a
fair fight with a knowledgeable referee, the courts .
could count ten and the patent holder could no longer 5
maintain that he was champion .. .”

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“Tf litigation were costless, both to the litigants and to
society, it might be desirable never to allow collateral
estoppel to preclude a new lawsuit. But as with most
mortal endeavors, litigation is not so blessed. Collateral
estoppel is a rule of response and as such it is not
always pure or just or even cognitive. Efficiency and
economy in judicial administration have their places in
our judicial schema. Blonder-Tongue does require as
a condition precedent to its invocation at least one
round of pristine purity. In our case we cannot say that
such an encounter has not taken place. Blumcraft had
a full and fair opportunity to litigate the validity of its
patent in a forum of its own choosing, and the patent
was declared invalid. Under both the letter and spirit
of the Supreme Court’s ruling in Blonder-Tongue, the
district court was correct in applying collateral estoppel
and in granting defendant’s motion for summary judg-
ment.”

The opinion sought to be reviewed reduces the effect of
Blonder-Tongue from a “knock-out blow” to a gentle jab
at the multiplicity of patent litigation. The Seventh Circuit
ruled (A3):

“..as Judge Learned Hand explained almost forty
years before, ‘.. . [collateral] estoppel extends only to
facts decided and necessary to the decision’ Irving Nat.
Bank v. Law, 10 F2d 721, 724 (1926). Since the Dale
Court’s judgment by its terms did not depend on the
invalidity of claims not specified in that judgment, ap-
pellants are not collaterally estopped from asserting the
remaining claims of the 926 patent.” (Parenthesis by
Seventh Circuit)

The Seventh Circuit’s above quoted narrow definition of
the subject matter expressly and necessarily adjudicated in
the earlier case conflicts with 1ecent decisions of the Fourth’,

1 Technograph Printed Circuits, Ltd. v. Martin-Marietta Corp.,
474 F2d 798, 801 (4th Cir. 1973).

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Seventh,’ and Tenth? Circuits and the Central District of
California? The conflict referred to appears from the
following summaries.

A. The Seventh Circuit’s Own Blonder-Tongue Decision
Broadly Defines The Subject Matter Of The Estoppel
Resulting From A Prior Holding Of Invalidity

In Univ. of Illinois Foundation v. Blonder-Tongue Labs.,
Inc., 465 F2d 380, 381 (7th Cir. 1972), cert. den., 93 S.Ct.
559 (1972) the court affirmed per curiam a dismissal of a
patent infringement action predicated on the defense of
collateral estoppel and adopted the opinion of the district
court reported at 334 F.Supp. 47 (N.D. Tl. 1971). In that
decision Judge Hoffman had ruled as follows (p. 51):

“Finally, plaintiff asserts that the Winegard decision ;
is not dispositive because plaintiff did not allege in
that case the infringement of claims numbered 6, 7, and
8 of the Isbell patent. The defendant in that case, how- :
ever, put the whole patent in issue by praying for a
decree adjudging the patent to be null and void, and the
District Court and Court of Appeals for the Eighth
Circuit so adjudged.”

The Winegard decree referred to in the preceding quotation
had merely “dismissed on its merits” (A56) an action for
patent infringement in which the answer included a de-
fense of patent invalidity and in which the plaintiff had not

1 Univ. of Illinois Foundation v. Blonder-Tongue Labs., Inc., 465
F2d 380 (1972), affirming, 334 F.Supp. 47 (N.D. Ill. 1971); Tech-
nograph Printed Circuits, Ltd. vy. Methode Electromcs Inc. (A 59)
(7th Cir. 1973), affirming, 174 USPQ 297 (N.D. Ill. 1972).

2 Blumcraft of Pittsburgh v. Architectural Art Mfg., Inc. 337
F.Supp. 853 (D. Kan. 1972), aff'd per curiam, 459 F2d 482 (10th
Cir. 1972).

3 Technograph Printed Circuits, Ltd. v. Packard Bell Electronics
Corp., 290 F.Supp. 308 (C.D. Cal. 1968).

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charged infringement of claims 6, 7 and 8.1 Thus in Blon-
der-Tongue the Seventh Circuit without insisting on com-
pliance with the strict requirements of common law col-
lateral estoppel extended the preclusive effect of the prior
judgment to three patent claims which were admittedly not
infringed and had not been expressly and necessarily in-
validated in the decree of the prior case. The conflict be-
tween the decision sought to be reviewed and the earlier
Seventh Circuit’s affirmance of Judge Hoffman’s application
of Blonder-Tongue estoppel was virtually admitted by the
remark (465 F.2d p. 381):

“Recent decisions of other courts are consistent with
the decision of the district court in this case.®”

B. In The Technograph Cases A Holding Of Invalidity
Expressly Restricted To A Few Patent Claims Has

Been Held To Preclude Litigation Of The Other Patent
Claims In The Fourth And Seventh Circuits And In
The Central District Of California

Three decisions applying collateral estoppel to claims
not previously expressly invalidated are based on T'echno-
graph Printed Circuits, Ltd. v. Bendix Aviation Corp., 218
F.Supp. 1 (D. Md. 1963), aff’d, 327 F2d 497 (4th Cir.
1964), cert. den., 379 U.S. 826, 85 S.Ct. 53 (1964). In that
ease only a limited number of claims in each of the three
patents was “declared on” and a more limited number was
used as “example” claims. The Maryland district court
had declared invalid only the example claims of the patents
and had denied the declaratory judgment counterclaims
without prejudice (218 F.Supp. pp. 5, 58).

1 Univ. of Minois Foundation v. Winegard Co., 271 F.Supp. 412,
413, 415 (S.D. Iowa 1967), aff'd, 402 F2d 125 (8th Cir. 1968),
cert. den., 394 U.S. 917, 89 S.Ct. 1191 (1969).

“3 Bourns, Inc. et al. v. Allen Bradley Co., et al., No. 70 C 1992
N.D. Ill. (Feb. 7, 1972); Blumcraft of Pittsburgh v. Architectural
Art Mfg., Inc., 337 F.Supp. 853 (C.D. Kansas, 1972).”

SPT RETA AMI IER 6

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11

The estoppel effect of that decision was first examined
in Technograph Printed Circuits, Ltd. v. Packard Bell
Electronics Corp., 290 F.Supp. 308 (C.D. Calif. 1968) which
was an action generally charging infringement of the same
three patents. Anticipating the impending demise of the
mutuality requirement, the California district court dis-
missed the entire litigation inter alia because the plaintiff
had lost its test case against Bendix in Maryland and (290
F.Supp. p. 312):

“ .. the exhaustive record, and the long and meticu-
lous opinion of Judge Watkins, dispel any question but
that the Maryland case was tried diligently, was con-
sidered thoroughly and exhaustively by the trial court,
that the plaintiffs had their ‘days in court,’ and sug-
gest to the thoughtful reader that if there was anything
else in favor of validity roncerning any claim in any of
the patents in addition to what the plaintiffs produced,
counsel would have done so.”

Thus collateral estoppel was applied to claims which had
been deliberately and expressly left unadjudicated in the
first action.

The extent of the estoppel resulting from the Bendix
case came up again in T'echnograph Printed Circuits, Ltd. v.
Martin-Marietta Corp., 474 F2d 798, 801, 802 (4th Cir.
1973). The court affirmed the dismissal of a patent infringe-
ment action on the authority of Blonder-Tongue for the
following reasons:

“We turn to the next requirement of Blonder-Tongue:
that the issues in both proceedings be identical. In
Bendix, the district court held that claims 4, 5, 10, 14,
15 and 16 of the 697 and certain claims of ’165 and
960 were invalid for obviousness and anticipation. 218
F.Supp. 1, 31, 58. In the present appeal, no issue is
raised 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 validity

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of claims 11, 12 and 13 of ’697 were not specifically
mentioned as being invalid in Bendix, an examination
of those claims shows that they were dependent on
claim 10, which was held invalid in Bendix. Also, the
trial court’s opinion states that the parties here con-
ceded that the issues in suit were identical to the issues
decided against plaintiffs in Bendix (340 F.Supp. 423,
425), and this is not contested on appeal. Accordingly,
the requirement of Blonder-Tongue that the issues be
identical in both proceedings has been complied with.”?

In Technograph Printed Circuits, Ltd. v. Methode Elec-
tronics, Inc., (A59) (7th Cir. 1973) the Seventh Circuit
agreed with the Fourth Cireuit’s decision in the Martin-
Marietta case just discussed. The opinion of the Seventh
Cireuit in the Methode Electronics case denies any conflict
with the opinion of which the present petition seeks review.
Such conflict, however, is manifest because the Seventh
Cireuit in the Methode Electronics case applied Blonder-
Tongue estoppel to claims not expressly invalidated in a
prior litigation, saying (A66) :

“Even without the stipulation, [relating to identity of
issues] a reading of claims 10, 11, 12 and 13 demon-

1 The concession referred to in the penultimate sentence of this
quotation is explained as follows in footnote 13 of the petition for
a writ of certiorari No. 73-147 October Term 1973:

“In oral argument to the District Court, plaintiffs’ counsel
stated, as an aside, that ‘the issues in this suit, your Honor,
are the same as the issues in the Bendix case’ (Tr., p. 139)
but there was no intent to waive plaintiffs’ rights to a deter-
mination on the merits of the claims not actually adjudicated
in Bendix. The critical point on the issue of collateral estoppel
is that the Bendix court did not in fact adjudicate claims 11,
12, and 13: ‘Sinee the (Bendix) court’s judgment by its terms
did not depend on the invalidity of claims not specified in that
judgment, appellants are not collaterally estopped from assert-
ing the remaining claims of the ('697) patent.’ See Bourns,
A-53.”

CRN ee oe WEEE SAC LONG ELLE YY OE YER BT anor BOR eer eR, ne:

13

strates the complete dependence of 11, 12 and 13 upon
claim 10.”

Thus the Fourth and the Seventh Circuit based their
holdings of collateral estoppel on a comparison of patent
claims. A similar reading and comparison of the claims of
the ’926 Bourns patent would have shown that the claims not
expressly invalidated in the Dale decree do not differ sig-
nificantly from the claims which were so invalidated. The
failure to compare the claims of the 926 patent in the hold-
ing below was apparently induced by the unduly strict
interpretation of the requirements of common law estoppel.

C. The Tenth Circuit Has Applied Blonder-Tongue
Estoppel To Patent Claims Not Previously Invalidated

Blumcraft of Pittsburgh v. Architectural Art Mfg. Inc.,
459 F2d 482 (10th Cir. 1972) affirmed per curiam a judg-
ment “for the reasons stated by the district court, reported
at 337 F.Supp. 853 (D. Kan. 1972).” The affirmed opinion
includes the following paragraph (337 F.Supp. 858, 859) :

“Plaintiff claims a significant difference exists between
the issues and scope of the South Carolina case and the
issues and scope of the one at bar, in that the mechani-
cal patent No, 2,905,445, in this case, has all six claims
contested, whereas only claims one and three were at
issue in South Carolina in addition to the design patent.
This sort of claim was put at rest by Judge Hoffman
on the remand of Blonder-Tongue, where it was pointed
out the judgment in the first court held the whole
patents invalid, even though all of the claims were not
controverted in the lawsuit. In the case at bar, when
one examines the opinions in the South Carolina case,
both in the trial and appellate courts, the final judg-
ment referred to the validity or invalidity of the whole
patents. Moreover, the discussion by the appellate court
of the obviousness of plaintiff’s mechanical patent
indicates their reference and contemplation of it as a

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14

whole as to rails, posts, and the clamp, bolts and
notches for holding them in place. No separability or
savings clause as to any claims is indicated by the
Fourth Circuit. The judgment of obviousness must be
deemed to relate to the entire mechanical patent.”

The five recent decisions summarized above determine
the scope of estoppel in patent cases by reference to the
pleadings, the nature of the invention, the patent claims
involved and the opinions rendered in the earlier case, The
policy of Blonder-Tongue cannot be effected by an unduly
technical application of common law concepts of collateral
estoppel. The present holding of the Seventh Circuit that
collateral estoppel cannot apply to patent claims not ex-
pressly invalidated by a prior judgment if the prior “judg-
ment by its terms did not depend on the invalidity of
[those] claims” conflicts with the foregoing decisions and
should be reviewed.

~~

15

Question 2

The opinion below narrowed the estoppel resulting from
the Dale case not only by resort to an unduly restrictive
interpretation of common law collateral estoppel but also
by misinterpreting the opinion in the Dale case and by
attributing no importance to the fact that all of the claims
of the 926 patent were put in issue by the pleadings in the
Dale case, The Seventh Circuit ruled (A2):

“. .. Dale is binding only as to the claims specifically
mentioned in its judgment.”

By contrast the district court had focused on the issue
of patent validity as pleaded and on the general pronounce-
ments of patent invalidity in the opinion of the Nebraska
district court (A19):

“Among other things, the court’s decision says with re-
spect to Patent No, 2,777,926: ‘. . . the 926 patent is
held to be invalid.’ 308 F.Supp. at 507.

The pleadings in the Nebraska suit demonstrate that
both the plaintiffs and the defendant were litigating
the validity of the patent, not merely part of it.”

The disagreement between the two lower courts involves
important questions of federal law which should be laid to
rest (A) to preserve Blonder-Tongue’s vitality and (B) to
preserve the public policy requiring adjudication of patent
validity and complete disposition of a counterclaim for
declaratory judgment of patent invalidity, Sinclair & Car-
rol Co. v. Interchemical Corp., 325 U.S. 327, 330, 65 S.Ct.
1148, 1145 (1945); Altvater v. Freeman, 319 U.S. 359, 363,
63 §.Ct. 1115, 1118 (1943).

A. The Ruling Below Should Be Reversed To Preserve
Blonder-T ongue’s Vitality

If Blonder-Tongue’s disapproval of multiple patent trials
and the resulting misallocation of resources is to have any

PK ett ew » RT aed) it a i ated oe ” CUISINE MY ST ee ee NP nee LP 4 LE PATE ATT OVEN Pow

16

vitality it should not permit the patentee the option of con-
ducting a number of infringement trials equal to the num-
ber of claims in his patent. While the law permits a patent
to contain plural patent claims which may be severable
with respect to validity, 35 USC 253, 282, 288, these claims
are merely convenient means of expressing and defining
the same inventive idea in different ways. As stated in See.
706.03(1) of the Official Manual of Patent Examining Pro-
cedure (1973) the Patent Office (A71) “examiner should
be reasonable in setting the number [of claims] to afford
the applicant some latitude in claiming his invention.” The
extent of this latitude is demonstrated by /n re Flint, 411
F2d 1353 (CCPA 1969), which held that forty-two was
not an unduly large number of patent claims for an inven-
tion identified as a spring seat.

The liberality with which the Patent Office allows numer-
ous claims in a patent for a single invention should not be
complemented by an equal liberality of the judiciary. To
permit a patentee the opportunity of bringing successive
law suits on different claims until each and every claim
has been expressly invalidated in a decree complying with
the Seventh Circuit’s unduly restrictive interpretation of
common law collateral estoppel would render Blonder-
Tongue ineffective. In determining the subject matter cov-
ered by Blonder-Tongue estoppel the precise wording of
the final decree should not be of controlling importance,
The words employed in a final decree adverse to patent
validity seem to be largely fortuitous as shown by a com-
parison of the decrees in the Winegard ease (A56) and
in the Dale case (App 86). Happenstance of decree drafts-
manship should not be decisive in the operation of the
Blonder-Tongue doctrine. Application of the Blonder-
Tongue doctrine should turn on the generality of the va-
lidity issue raised in the pleadings and on the patentee’s
procedural, substantive and evidential opportunity to es-

17

tablish validity in the earlier case. The patentee should not
be able to limit unilaterally the scope of the ensuing estop-
pel by specifying at the trial only one or a few claims as
being infringed.

If the pleadings put the validity of the entire patent in
issue and the particular claims specified at the trial are
held invalid, that holding should ordinarily prevent further
litigations on the other claims of the patent. Under these
circumstances further litigation should be permitted only
: where the earlier decision of invalidity contains a specific
savings clause of the type referred to in the passage from
the Blumcraft case quoted on page 14 of this petition.

B. The Ruling Below Should Be Reviewed To Preserve
The Public Policy Requiring Adjudication Of Patent
Validity And Disposition Of A Counterclaim For
Declaratory Judgment Of Patent Invalidity

|
Tt has long been an established principle that the validity ’
of a patent is a question of public importance and should
be resolved whenever possible, Sinclair & Carroll Co. v. ;
Interchemical Corp., 325 U.S. 327, 330, 65 S.Ct. 1148, 1145 i
(1945); Hale v. General Motors Corp., 147 F2d 383 (1st
Cir. 1945); Bresnick v. United States Vitamin Corp., 139
F'2d 239, 242, (2nd Cir. 1943); Shatterproof Glass Corp. v.
Guardian Glass Co., 462 F2d 1115 (6th Cir, 1972) ; M.0.8.
Corp. v. John I, Haas Co., 375 F2d 614 (9th Cir. 1967). The
decision sought to be reviewed subverts this principle by
narrowly restricting the prior general ruling of patent in-
validity to the claims specifically relied on at the trial and
expressly invalidated in the final decree.

o> De re regat F er

A related principle is that the validity of a patent prop- i
erly put in issue by a counterclaim must be disposed of and
does not become moot when the infringement question is b

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18

resolved adversely to the patentee.’ This principle is violated
by the decision sought to be reviewed. That decision treats
the Dale case as failing to dispose of the counterclaim for
declaratory judgment of invalidity with respect to the
patent claims which were not enumerated in the specific
invalidity holding of par. 2 of the judgment.

CONCLUSION

Application of the Blonder-Tongue doctrine in the lower
courts has resulted in a conflict about the scope of the estop-
pel and the elements to be considered in determining the
scope of the estoppel. This petition should be granted to
resolve the conflict among the Circuits and the district
courts and to make clear that the technicalities of the com-
mon law rule of collateral estoppel are inconsistent with
the policy objectives of Blonder-Tongue. The lower court’s
ruling erroneously restores to the patentee the opportunity
for multiple litigation. It erroneously permits the patentee
to rely on a different patent claim at each successive trial.
It erroneously limits the scope of the Blonder-Tongue
estoppel by narrowly interpreting the decree of dismissal
with prejudice of the Amended Complaint after a trial upon
pleadings which had put the entire patent in issue. It errone-
ously failed to compare the claims of the patent in suit and

1 Alvater v. Freeman, 319 U.S. 359, 63 S.Ct. 1115 (1943) ; Young
v. John McShain, Inc., 130 F2d 31, 34 (4th Cir. 1942); Sterling
Aluminum Prods., Inc. v. Bohn Aluminum & Brass Corp., 298 F2d
538, 540 (6th Cir. 1962); Kalo Inoculant Co. v. Funk Bros. Seed
Co., 161 F2d 981, 991 (7th Cir. 1947), rev’d on other grounds, 333
U.S. 127, 68 S.Ct. 440 (1948); Allegheny Steel & Brass Corp. v.
Elting, 141 F2d 148, 149, 150 (7th Cir. 1944) ; Illinois Tool Works,
Inc. v. Brunsing, 378 F2d 234 (9th Cir. 1967); Kawneer v. Pitts-
burgh Plate Glass Co., 103 F.Supp. 671 (W.D. Mich. 1952).

19

erroneously failed to give full effect to the opinion rendered
in the earlier action which stated (A34) “the ’926 patent
is held to be invalid”.

Respectfully,

Ricuarp D. Mason
Reematp K. Barey
Cremens HurMann
Attorneys for Petitioner
Beckman Instruments, Inc.

Of Counsel
Mason, KoLEHMAINEN,
Ratusurn & Wyss
20 North Wacker Drive
Chicago, Illinois 60606

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385607_1117%3A1. Public record. Not legal advice.