Appendix — Bourns, Inc. v. Allen-Bradley Co.

EI Ke AF 6 ODOR IE IOLRY LIA TCS III OI ASEAN NIE

Al

BOURNS, INC. and Marlan E. Bourns,

Plaintiffs-Appellants and Cross Appellees,

Vv.

ALLEN-BRADLEY COMPANY et al.,

Defendants-Appellees and Cross-Appellants.

Nos. 72-1222, 72-1223.

United States Court of Appeals,

Seventh Circuit.

Argued April 5, 1973.

Decided June 14, 1973.

Rehearing En Banc Denied July 17, 1973.

SPRECHER, Circuit Judges.

CLARK, Associate Justice.

wh

BRA ABS ORT Ae BAER

Retired, is sitting by designation.

PS Se AO AD OC MeITS ESOP ER as RS Are

BADAL LOIN OS Mae MT, ET Sa Le

Before CLARK, Associate Justice,* and PELL and

Appellants Bourns, Inc. and Marlan E. Bourns challenge

the District Court’s application of the doctrine of collateral

estoppel as applied in Blonder-Tongue Laboratories, Ine.

v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct.

1434, 28 L.Ed.2d 788 (1971), to bar this patent infringement

suit which was filed in the United States District Court for

the Northern District of Illinois against Allen-Bradley

Company et al., appellees. Appellants alleged infringement

of their “leadscrew actuated potentiometer,” Patent No.

2,777,926 (the ’926 patent). Among the defenses appellees

pleaded collateral estoppel based on the final judgment

entered against appellants in Bourns, Inc. v. Dale Elec-

tronics Inc., 308 F.Supp. 501 (D.Neb. 1969). After the

Supreme Court handed down the Blonder-Tongue decision,

appellees filed amended answers further alleging that

* Associate Justice Tom C. Clark, United States Supreme Court,

A2

appellants had voluntarily dismissed their appeal to the

United States Court of Appeals for the Eighth Circuit on

May 4, 1970, and moved for summary judgment. The Dis-

trict: Court, 348 F.Supp. 554, granted appellees’ motion,

holding that Blonder-Tongue governed this case and that

the Dale decision had invalidated all claims embraced in

the 926 patent. We agree that Blonder-Tongue bars appel-

lants from relitigating the patent claims explicitly invali-

dated in Dale, but reverse the judgment below insofar as

it bars appellant from relitigating the remaining °926

claims.

1. The Dale Judgment.

In the Dale pleadings Bourns had alleged infringement

on the basis of its patent generally, i. e., without singling

out specific claims. Likewise, the defendants in Dale had

counterclaimed for a declaration that the entire patent was

invalid. However, the Dale judgment stated in relevant

part:

“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 prej-

udice, and the Amended Counterclaim is sustained to

the extent indicated.”

The District Court here found the Dale judgment ambig-

uous in its application to the 926 claims not explicitly men-

tioned therein. On the basis of several isolated statements

in the Dale opinion (e. g., “. . . the 926 patent is held to

be invalid.”) it concluded that the Dale court intended to

hold the entire patent invalid.

We disagree with the District Court’s interpretation and

conclude that Dale is binding only as to the claims specifi-

cally mentioned in its judgment. The opinion in that case

begins: “Plaintiff relies upon claims 1, 2, 11, 14, 15, 16 and

es, “ro

A3

20 of the 926 patent.” Further-down in the opening para-

graph the opinion continues: “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.” (Emphasis added.) Still further in the opinion

the court says: “Commencing with the history and progress

of this application through the patent office as finally em-

bodied in claims 1, 2, 11, 14, 15, 16 and 20, it provides some

insight into the scope of the patent.” And in the judgment

the Dale court again sets out these claims as invalid. We

think it clear from these references that where the court —

referred to the 926 patent as being invalid, it was referring

only to those claims specifically designated at the outset

and re-stated in the final judgment. As Professor Moore

teaches :

[A prior judgment] operates as a collateral estoppel

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

were in issue or contraverted and upon the deter-

mination of which the initial judgment necessarily de-

pended. [Emphasis added. ]

1B Moore’s Federal Practice 3777 (2d ed. 1965); and, as

Judge Learned Hand explained almost forty years before,

“... [eollateral] estoppel extends only to facts decided and

necessary to the decision.” Irving Nat. Bank v. Law, 10

F.2d 721, 724 (2 Cir. 1926). Since the Dale court’s judg-

ment by its terms did not depend on the invalidity of claims

not specified in that judgment, appellants are not collater-

ally estopped from asserting the remaining claims of the

926 patent.

2. Application of the Blonder-Tongue Collateral Estoppel

Doctrine.

Appellants also urge that collateral estoppel should not

be applied to bar their raising the same patent claims that

2 ee ah itt

A4

were declared invalid in Dale. They rely on the statement

in Blonder-Tongue that “the patentee-plaintiff must be per-

mitted to demonstrate, if he can, that he did not have ‘a fair

’ opportunity procedurally, substantively and evidentially to

pursue his claim the first time.’” 402 U.S. at 333, 91 S.Ct.

at 1445. Appellants argue that they lacked an incentive to

fully litigate in Dale due to (1) an alleged anti-patent bias

of the Eighth Circuit, (2) the relative insignificance of the

Dale suit, (3) new procedural advantages made available

since Dale was begun, (4) the alleged greater hospitality

of the Seventh Circuit toward patents, and (5) their reli-

ance on the pre-Blonder-Tongue case of Triplett v. Lowell,

297 U.S. 638, 56 S.Ct. 645, 80 L.Ed. 949 (1936), which re-

quired mutuality of estoppel. We need not pause to discuss

these claims. They are fully answered by the District

Court, which correctly noted that appellants themselves

chose the Nebraska forum; that the Dale court applied

Supreme Court standards of patent validity as enunciated

in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15

L.Ed.2d 545 (1966) ; that the Dale litigation involved a po-

tential recovery by appellants of approximately $1,000,000,

and that “most if not all” of the evidence alleged by appel-

lants to have been newly discovered was in existence and

discoverable during the Dale litigation. The District Court

concluded that appellants lost in Dale after a full and fair

hearing and that the equities fully justify the application

of collateral estoppel against them.

The District Court also concluded that the Supreme

Court in Blonder-Tongue implicitly rejected reliance on its

prior decision in Triplett v. Lowell, supra, as an adequate

basis for avoiding the general rule fashioned in the later

decision. See Monsanto Co. v. Dawson, Chemical Co., 443

F.2d 1035 (5 Cir. 1971), cert. denied 405 U.S. 974, 92 S.Ct.

1191, 31 L.Ed.2d 248 (1972). We agree. The Dale litigation

was pending for seven years in a jurisdiction with no back-

SON BORODIN TOME RE MR NI S98 OD ae OLA RED ITD WM sae Da

A5

log; the trial itself lasted six days and produced a tran-

script of 610 pages; and the potential recovery was over

$1,000,000. Thus, appellants had ample incentive to litigate

the case to the end. True, the Supreme Court held in Trip-

lett that collateral estoppel did not preclude “relitigation

of the validity of a patent claim previously held invalid

in a suit against a different defendant.” Triplett v. Lowell,

supra, at 644 of 297 U.S., 56 S.Ct. 645. However, in over-

ruling Triplett, the Blonder-Tongue Court did not see fit

to rule prospectively, though it has so limited recent rulings |

in other contexts where retrospective application would

work hardship and inequity. Phoenix v. Kolodziejski, 399

U.S. 204, 213-215, 90 S.Ct. 1990, 26 L.Ed.2d 523 (1970);

Cipriano v. City of Houma, 395 U.S. 701, 706, 89 S.Ct. 1897,

23 L.Ed.2d 647 (1969). Indeed, it specifically commented

that in the end the use of the collateral estoppel doctrine

“will necessarily rest on the trial courts’ sense of justice 4

and equity.” 402 U.S. at 334, 91 S.Ct. at 1445. The District

Court has carefully appraised the justice and equity of 7

applying the doctrine here and has held against appellants. ;

We have examined the record and conclude that its findings

are fully supported therein.

Appellants dispute that they had full and fair judicial

resolution of their claims. They suggest that they aban-

doned the Dale appeal 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, particularly

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 rea-

sonable chance of prevailing on the merits, we believe it

by PR SF

MS

ee

PERS PES ee

AG |

equitable both as a general matter and specifically under |

the Blonder-Tongue decision to apply the estoppel rule

established in that decision.

The judgment below is reversed insofar as it bars appel-

Jants from asserting the patent claims other than those

explicitly declared invalid in the Dale judgment. In other

respects the judgment is affirmed.

PELL, Circuit Judge (concurring in part and dissenting

in part).

I concur in the majority opinion insofar as it reverses

that part of the judgment of the district court which barred

appellants from asserting patent claims other than those

explicitly declared invalid in the Dale judgment. However,

I respectfully dissent from the balance of the majority

opinion.

In considering the contentions of the appellants that the

judgment in the District Court of Nebraska does not collat-

erally estop them as to any claims of the patent asserted in

the Northern District of Illinois, the following significant

chronology should be kept in mind.

The decision in the Dale case, Bourns, Inc. v. Dale Elec-

tronics Incorporated, 308 F.Supp. 501 (D.Neb.1969), was

handed down on December 29, 1969. The original decision

of this court in University of Illinois Foundation v.

Blonder-Tongue Laboratories, Inc., 422 F.2d 769 (7th Cir.

1970), was issued on February 13, 1970, and was modified

on denial of rehearing on April 2, 1970.

The appellants dismissed their appeal from the Dale

district court decision in the Kighth Circuit on May 4, 1970.

The complaint which was the fountainhead of the present

appeal was filed in the Northern District of Tlinois on

August 11, 1970.

bebeiibd ere ene MRNAS AUR ay = VDE YA menvne

AT

The opinion in the Blonder-Tongue case in the United

States Supreme Court, Blonder-Tongue Laboratories, Inc.

v. University of Illinois Foundation, 102 U.S. 313, 91 S.Ct.

1434, 28 L.Ed.2d 788, was handed down on May 3, 1971.

The Supreme Court in Blonder-Tongue overruled a prec-

edent which had been on the books since 1936, Triplett v.

Lowell, 297 U.S. 638, 56 S.Ct. 645, 80 L. Ed. 949 (1936).

Triplett indicated that “the rules of the common law appli-

cable to successive litigations concerning the same subject-

matter” did not preclude “relitigation of the validity of a

patent claim previously held invalid in a suit against a dif-

ferent defendant.” 297 U.S. at 644, 56 S.Ct. at 648. This

court in its original Blonder-Tongue opinion, while observ-

ing that it would seem sound judicial policy that the adjudi-

cation of a patent validity issue against the plaintiff in one

action where it was a party would provide a defense in any

other action by the plaintiff for infringement of the same

patent, nevertheless stated, “That, however, is not the law

in this field.” 422 F.2d at 772.

In essence, the majority opinion in the present appeal

concludes that the district court carefully appraised the

justice and equity of applying the Blonder-Tongue doctrine

to the present case and upon so doing reached a correct

result. I cannot agree with the initial premise for, as I

read the district court’s opinion, it concluded that the

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

decision itself,” and plaintiffs’ reliance on pre-Blonder-

Tongue decisions when abandoning their appeal “is con-

trary to the holding of that controlling decision which

abrogated the prior law.”

I do not read the controlling case so broadly. I note the

following significant passages in the opinion of the Court.

“The broader question is whether it is any longer tenable

to afford a litigant more than one full and fair opportunity

a <e

A8

for judicial resolution of the same issue.” 402 U.S. at 328,

91 8.Ct. at 1442. “But the case before us involves neither

due process nor ‘offensive use’ questions. Rather, it depends

on the considerations weighing for and against permitting

a patent holder to sue on his patent after it has once been

held invalid following opportunity for full and fair trial.”

402 U.S. at 330, 91 S.Ct. at 1443. “Presumably he [the pat-

entee] was prepared to litigate and to litigate to the finish

against the defendant there involved.” 402 U.S. at 332, 91

S.Ct. at 1444. “Rather, the patentee-plaintiff must be per-

mitted to demonstrate, if he can, that he did not have ‘a fair

opportunity procedurally, substantively and evidentially

to pursue his claim the first time.’ ... This element in the

estoppel decision will comprehend, we believe, the import-

ant concerns about the complexity of patent litigation and

the posited hazard that the prior proceedings were seriously

defective.” 402 U.S. at 333, 91 S.Ct. at 1445. “‘[T]he

expense of defending & patent suit is often staggering to the

small businessman.’” 402 U.S. at 334, 91 S.Ct. at 1445.

(Emphases added.)

With further reference to the matter of expense if the

Triplett rule were maintained, the Court observed the

money expended in subsequent litigation could be put to

better use, such as further research and development, and

that subsequent defendants might determine it was prefer-

able to pay royalties under a license rather than to incur

the costs of litigation. 402 U.S. at 338, 91 S.Ct. 1434.

The Court also adverted to the fact that there would be

some saving of judicial time “if even a few relatively

lengthy patent suits may be fairly disposed of on pleas of

estoppel.” 402 U.S. at 348, 91 S.Ct. at 1453.

Finally, the Court, since the issue had not been ventilated

below, remanded the cause so that, inter alia, the patentee

Ot Ne eee

A9

could have the opportunity to demonstrate “why an estoppel

should not be imposed in this case.”

In sum, the Court in Blonder-Tongue did not, as the

district court seems to have done, lay down a hard and fast

rule.

Assuming arguendo that the Supreme Court intended the

sweep of Blonder-Tongue to be sufficiently broad to encom-

pass all litigation the purpose of which was to relitigate a

patent issue which had already elsewhere been found want-

ing, irrespective of whether that litigation was intiated

before or after the change of the law, then applying the |

rationale which produced Blonder-Tongue, as specifically

referred to hereinbefore, in my opinion the plaintiffs should

not be estopped in the present case. Obviously, of course,

they might well have been estopped if the litigation had

been started after the rendition of Blonder-Tongue, but that

is not the posture of this case. ;

Theoretically, the plaintiffs had an opportunity for a full

and fair judicial resolution of the issue in Dale. Certainly

they had the opportunity for a full resolution. All they had

to do to continue expending the not inconsiderable money

which would necessarily have been involved in briefing and

arguing in the Eighth Circuit and then pursuing certiorari

in the Supreme Court. They did not choose to do so for

reasons which I find persuasive and which are outlined in

the majority opinion. Pursuing the litigation, of course,

would also have put Dale to considerable expense. The

plaintiffs were not prepared to litigate to the finish against

the defendant there involved for the reasons indicated, Nor

is the cost rationale of Blonder-Tongue brought into full

play here. This is no case of a small businessman being

forced willy-nilly into a licensing agreement. The very

names of the corporate defendants would indicate other-

wise; in addition, the action below was brought as a class

[ARR RRND T Courant phen en putin > Tt ater nant SPREE LRAT ND OA POOR yy > <—D ee err =" "84g eee A

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action, presumably with the intent of putting an end one

way or the other to the validity of the claims. Plaintiffs by

their dismissal and their filing of the broad-breadth sub-

sequent action were travelling economy class, as to them-

selves, the judiciary of the Eighth Circuit, Dale, and,

to some extent, their individual prospective infringer-

opponents.

While the plaintiffs had the full opportunity adverted to

in Blonder-Tongue, it seems clear to me that we are not

able to say with certainty that the second prong of fairness

was equally present. It is obvious that new counsel who

came onto the scene subsequent to the district court deci-

sion in Dale did not think so. The decision to dismiss the

appeal and to file elsewhere against the remaining alleged

infringers was made in the forepart of the year 1970 appar-

ently about the time that this court decided that it did not

agree with the result which had been reached on the patent

involved in Blonder-Tongue by a district court in the

Eighth Circuit.

The decision was made during the same period of time

and the same patent litigation climatic conditions which

compelled the chief judge of a district court in the Eighth

Circuit to observe in Woodstream Corp. v. Herter’s, Inc.,

312 F.Supp. 369, 370 (D.Minn.1970), modified, 446 F.2d 1142

(8th Cir. 1971), as follows:

“The courtrooms within the province of the Eighth

Cireuit Court of Appeals do not afford a congenial

forum to the holder of a United States patent. A

reading of the decided cases clearly reflects this. It is

especially true since 1966 following the Supreme

Court’s expressions in Graham v. John Deere Co., 383

U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545. I can find no

record of the Eighth Circuit Court ofAppeals, uphold-

ing the validity of a patent since Graham. It did so

sparingly before Graham.”

—E——

4 NAAM DINERO OE SABI AG Et

All

It may well be that all of the patent cases which happened

to have been filed in the Eighth Circuit during the preced-

ing decade were of a questionable variety and on that phase

of the matter I do not comment. I do note, however, “the

batting average” which competent counsel, relying on T'rip-

lett, must have taken into consideration. The same counsel

could not have been unaware of the more favorable climate

in the Seventh Circuit. See the discussion of the situation

in the two circuits by this court in Scam Instrument Corp.

v. Control Data Corp., 458 F.2d 885, 888 n.4 (7th Cir. 1972),

in which it is indicated that the Eighth Circuit did sustain

the validity in part of a patent in 1971. This, however, was

subsequent to Blonder-Tongue.

While the foregoing discussion was based on the

arguendo assumption that Blonder-Tongue is retrospective,

I do not think that it was so intended, nor that the Supreme

Court would reach the result that it is. The district court in

the present case, however, had no doubt, observing that the

“Supreme Court could have softened the blow by ruling

only prospectively in Blonder-Tongue, as it has done on

several occasions.” If the district court merely meant that

the Supreme Court in handing down Blonder-Tongue could

have specified that it was prospective only, I, of course,

would have to agree. In so doing, however, I would also

note that the Court did not specify that the change of the

law was retrospective either. The issue simply was not

reached, and I am at a loss for the basis of the confidence of

expression of the district court that the decision was retro-

spective. If the district court meant that because collateral

estoppel could be considered as a defense to the plaintiff’s

suit in Blonder-Tongue it must be always retrospective,

which seemed to be a theory advanced by the defendants in

oral argument, then J must certainly disagree with the

result put forward by the district court. When new law is

established or, more importantly, when existing law is

RIT CORA: ARNON RR CoN lH PS DER W At ENE Pe

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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 cry

though from inferring that the decision is retrospective as

to other litigants who were relying on the pre-existing law.

The tests for determining whether a “new” decision should

be applied retrospectively have been the subject of judicial

attention. Chief Justice Burger had occasion to advert to

this facet of the law in Lemon v. Kurtzman, ——— U.S. ——,

93 S.Ct. 1463, 1467, 36 L.Kid.2d 151 (1973) in whieh it was

stated:

“Claims that a particular holding of the Court should

be applied retroactively have been pressed on us fre-

quently in recent years. Most often, we have been

called upon to decide whether a decision defining new

constitutional rights of a defendant in a criminal case

should be applied to convictions of others that predated

the new constitutional development. FE. ¢., Robinson v.

Neil, 409 U.S. 876 [98 S.Ct. 876, 85 L.Md.2d 29] (1973);

Adams v. Illinois, 405 U.S. 278 [92 S.Ct. 916, 31

L.Ed.2d 202] (1972); Desist v. United States, 394 U.S.

244 [89 S.Ct. 1080, 22 L.KMd.2d 248] (1969); Stovall v.

Denno, 388 U.S. 293 [S87 S.Ct. 1967, 18 L.Md.2d 1199]

(1967); Johnson v. New Jersey, 3884 U.S. 719 [86 S.Ct.

1772, 16 L.Ed.2d 882] (1966); Tehan v. Shott, 882 U.S.

406 [86 S.Ct. 459, 15 L.Ed.2d 453] (1966); Linkletter

v. Walker, 381 U.S. 618 [85 S.Ct. 1731, 14 L.Kd.2d 601]

(1965). But ‘in the last few deeades, we have recognized

the doctrine of non-retroactivity outside the criminal

area many times, in both constitutional and noncon-

stitutional cases.’ Chevron Oil Co. v. Huson, 404 U.S.

97, 106 [92 S.Ct., 349, 355, 30 L.Ed.2d 296] (1971);

Hanover Shoe v. United Shoe Machinery Corp., 392

U.S. 481 [SS S.Ct. 2224, 20 L.Ed.2d 1231] (1968) ;

Simpson v. Union Oil Co., 377 U.S. 13 [84 S.Ct. 1051,

12 L.Ed.2d 98] (1964); England v. State Board of

Medical Examiners, 375 U.S. 411 (84 S.Ct. 461, 11

L.Ed.2d 440] (1964). We have approved nonretro-

Al13

active relief in civil litigation, relating, for example,

to the validity of municipal financing founded upon

electoral procedures later declared unconstitutional,

Cipriano v. City of Houma, 395 U.S. 701, [89 8.Ct. 1897,

23 L.Ed.2d 647] (1969), and City of Phoenix, Arizona

v. Kolodziejski, 399 U.S. 204 [90 S.Ct. 1990, 26 L.Ed.2d

523] (1970); or to the validity of elections for local

officials held under possibly discriminatory voting laws,

Allen v. State Board of Elections, 393 U.S. 544 [89

S.Ct. 817, 22 L.kid.2d 1] (1969). In each of these cases,

the common request is that we reach back to disturb or

to attach legal consequence to patterns of conduct

premised either on unlawful statutes or on a different

understanding of the controlling judge-made law than

the rule that ultimately prevails.”

Tests for determining retroactivity are set forth in Chev-

ron Oil Co. v. Huson, 404 U.S. 97, 106-107, 92 S.Ct. 349,

355, 30 L.Ed.2d 296 (1971), as follows:

“Tn our cases dealing with the non-retroactivity ques-

tion, we have generally considered three separate

factors. First, the decision to be applied non-retro-

actively 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, 393 U.S. at 496 [88 S.Ct., at

2233], or by deciding an issue of first impression whose

resolution was not clearly foreshadowed, see, e.g., Allen :

v. State Board of Elections, supra, 393 U.S. at 572 [89 ;

S.Ct., at 835]. Second, it has been stressed that ‘[wle ;

must... weigh the merits and demerits in each case by

looking to the prior history of the rule in question, its

purpose and effect, and whether retrospective opera-

tion will further or retard its operation.’ Linkletter v.

Walker, supra, 381 U.S. at 629 [85 S.Ct., at 1738].

Finally, we have weighed the inequity imposed by

retroactive application, 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 “injustice or hardship” by a holding

st ee INE PONSA er >

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of nonretroactivity.’ Cipriano v. City of Houma, supra,

395 U.S. at 706 [89 S.Ct. at 1900].

In an analogous situation this court recently considered

the question in Bendix Corporation v. Balax, Inc., 471 F.2d

149 (7th Cir. 1972), and concluded that the holding in Lear,

Inc. v. Adkins, 395 U.S. 653 (1969), should not be applied

retroactively. Bendix has particular significance here

because in Lear the Court held that a licensee is not

estopped to interpose the invalidity of the licensed patent

as a defense to an action by the patentee-licensor to enforce

the license agreement. The Court expressly overruled its

1950 holding to the contrary. The venerability of Triplett

was fourteen years greater.

Applying the tests of Chevron to the present case: (a) a

new principle of law was established by overruling 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 Blonder-Tongue must of

necessity be relatively limited in numbers, retrospective

application would scarcely seem to further the operation of

the principle enunciated; and (c) there is an inherent

inequitable result if the principle is applied retro-

actively with injustice being avoided by a holding of

nonretroactivity.

It is to be noted that the Chevron test refers to a fore-

shadowing of the result but does so only in relation to the

decision of a case of first impression. If “writing on the

wall” is operative in the situation of a change of law also,

then, although the Triplett rule may have been questioned

by decisions and commentators, I am unaware of any clear-

cut indication from the Supreme Court on which a lawyer

could advise his client to the effect that Triplett would be

overruled. “Rumblings,” as the district court referred to

foreshadowing, is a chimerical basis for advice to a com-

PR ROI OR VEL SRE MOD EA ON OSA See LN IR pO 60 WE ORD

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mercial client who in the conduct of his affairs requires

predictabliity of as great certitude as possible if he is not

to be exposed to unexpected and undesired expensive

litigation.

As to foreshadowing, the situation was analogous in

Lear, upon which Judge Sprecher commented in Bendiz,

471 F.2d at 156, as follows:

“In Lear, there was an express overruling of a past

precedent. Although the Court noted that ‘[llong

before Hazeltine was decided, the estoppel doctrine had

been so eroded that it could no longer be considered the

“general rule”’ (395 U.S. at 664, 89 S.Ct. at 1908),

nevertheless in Hazeltine the Court characterized it as

the general rule. Whether Hazeltine was ‘clear past

precedent’ to the Supreme Court in 1971, the unquali-

fied pronouncement in that case undoubtedly made the

doctrine clear enough to parties relying upon it from

1950 to 1971.” [Footnote omitted.]

If foreshadowing is pertinent in the change of law situa-

tion, then it would appear to me that the present case

presents a stronger basis for finding no clear and compel-

ling presaging of the change than in the Lear situation,

where there had already been substantial erosion of the set-

aside doctrine in 1950 at the time the rule was recognized as

the general rule, although it was not actually set aside for

another 19 years.

I have adverted to the matter of advice of counsel in the

commercial field and, in ultimate analysis, I find that the

most persuasive reason for not denying the plaintiffs here

their full day in court. The reasons are more compelling

than the ordinary deference to precedent stated by Justice :

Cardozo, “Adherence to precedent must ... be the rule :

rather than the exception if litigants are to have faith in ’

the even-handed administration of justice in the courts.” ;

SRP SE RS EVORS

1The Nature of the Judicial Process 34 (1921). i

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The essentiality of definite predictability was recognized

by Mr. Justice Frankfurter in his separte opinion in Mon-

roe v. Pape, 365 U.S. 167, 221-222, 81 S.Ct. 473, 503, 5

L.Ed.2d 492 (1961), when, speaking of the civil rights case

before the Court, he observed, “This is not an area of com-

mercial law in which, presumably, individuals may have

arranged their affairs in reliance on the expected stability

of decision.” Here the plaintiffs did arrange their affairs

on what counsel justifiably could have taken as well-estab-

lished law, and they should not now suffer because of a sub-

sequent change of that law.

The principle of continuance of adherence to precedent

was overridden in its significance by policy factors deemed

of greater importance in Blonder-Tongue. The resultant

change of law, however, in my opinion, should not be con-

trolling on the relatively narrow issue here involved in the

situation of commitments made in reliance upon the prior

law, which commitments were made prior to the change

in the law.

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BOURNS, INC., and Marlan E. Bourns,

Plaintiffs,

Vv.

ALLEN-BRADLEY COMPANY et al,

Defendants.

No. 70 C 1992.

United States District Court,

N. D. Illinois, E. D.

Feb. 2, 1972.

DECISION and ORDER

McMILLEN, District Judge.

This cause comes on to be heard on motion of the defend-

ants for summary judgment on the ground of collateral

estoppel under Blonder-Tongue Laboratories, Inc. v. Uni-

versity of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434,

28 L.Ed.2d 788 (May 3, 1971). The court concludes that

the defendants’ Motion should be granted, with the result

that a final judgment will be entered in their favor. The

earlier motions filed by the defendants are thereby ren-

dered obsolete.

The Complaint in the case at bar was filed on August 11,

1970 by the owner and assignee of United States Patent

No. 2,777,926 issued on January 19, 1957. Plaintiffs allege

that six corporate defendants, as representatives of a class,

had been infringing their patent for six years and would

continue to do so unless enjoined. Defendants answered

separately and alleged that the patent was invalid for

obviousness and for other reasons. They also alleged that

plaintiffs were estopped and barred from the instant action

by virtue of a final judgment entered against them by the

United States District Court for Nebraska in Bourns, Ince.

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

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After the decision in Blonder-Tongue, supra, defendants

filed amended answers in which they alleged further that

plaintiffs had acquiesced in the Nebraska judgment by

voluntarily dismissing their appeal to the United States

Court of Appeals for the Kighth Circuit-on May 4, 1970.

Defendants thereupon filed the instant motions for sum-

mary judgment which in substance are motions for judg-

ment on the pleadings under F.R.Civ.P. 12(c).

The only question on such a motion is whether a genuine

issue of material fact remains to be decided and, if not,

whether the moving parties are entitled to judgment as a

matter of law. Since plaintiffs did not move to strike or

to file a reply to defendants’ affirmative defenses of es-

toppel and res judicata, the pleadings do not spell out plain-

tiffs’ position with respect to these defenses. The court

has considered the contentions made in plaintiffs’ brief,

however, in light of the defenses suggested by the Supreme

Court’s decision in its unanimous Blonder-Tongue decision.

Despite possible harshness on occasion, there can be no

doubt that Blonder-Tongue applies retrospectively. Mon-

santo Co. v. Dawson Chemical Co., 443 F.2d 1035 (5th Cir.

1971), petition for cert. filed, No. 71-787, 40 U.S.L.W. 3356.

It is true that plaintiffs were not apprised of this particular

decision when they abandoned their appeal to the Kighth

Circuit, but there were rumblings of it (cf. 402 U.S. 313,

91 S.Ct. at p. 1453). The same unfortunate turn of events

occurred in Blonder-Tongue when the University of Illinois

Foundation unexpectedly became bound by an adverse

decision of the Eighth Circuit in University of Illinois

Foundation v. Winegard Co., 402 F.2d 125 (8 Cir. 1968),

cert. den. 394 U.S. 917, 89 S.Ct. 1191, 22 L.Ed.2d 452 (1969).

The Supreme Court could have softened the blow by ruling

only prospectively in Blonder-Tongue, as it has done on

several occasions. Cf. England v. Louisiana State Bd. of

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Med. Exam., 375 U.S. 411, 84 S.Ct. 461, 11 L.Ed.2d 440

(1964). But the court no doubt felt that the public policy

which it was enunciating in Blonder-Tongue was sufficient

to justify an all-embracing decision.

Plaintiffs argue that the adverse decision by the federal

court in Nebraska did not affect the entire patent but only

certain of its claims. This argument is based primarily on

that court’s judgment order, entered after the decision re-

ported at 308 F.Supp. 501, which reads in part: “Claims

1, 2, 11, 14, 15, 16 and 20 of United States Patent No.

2,777,926 are invalid.” The court then dismissed the .

Amended Complaint “with prejudice” and sustained the

Amended Counterclaim “to the extent indicated.” The

record in that case does not reveal whether the parties

thereafter treated the patent as invalid, but the court’s

published opinion makes clear that it found the entire pat-

ent invalid. Among other things, the court’s decision 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. The Amended

Complaint alleged that the patent was “duly and regularly

issued” to the plaintiffs and that the defendant had been

infringing it for six years. Plaintiffs sought an injunction,

damages and attorneys fees “pursuant to the patent laws

of the United States.” Defendant in its Amended Answer

denied knowledge of whether the patent was duly and regu-

larly issued and stated “Plaintiffs are left to their proofs.”

Defendant also pleaded affirmative defenses and filed a

counterclaim for declaratory judgment in which it alleged

that the patent was invalid by reason of anticipation, obvi-

ousness, and other grounds going to the entire patent.

Nowhere in the pleadings are specific claims or partial

invalidity alleged.

A20

In the case at bar the Complaint and Answers likewise

go to the validity of the entire patent, and no mention is

made of specific claims. Plaintiffs now contend that they

are relying herein on Claims Nos. 3, 4, 6, 7, 12, 19, 21 and

22, as well as the ones itemized by the Nebraska judgment

order. Plaintiffs’ specification in the case at bar arises

from their answers to interrogatories when the defendants

inquired as to specific claims which their particular devices

were allegedly infringing. Plaintiffs answered by listing

most, if not all, of the 22 claims in their patent (Supple-

mental Answer filed July 20, 1971), but they have never

amended their complaint to allege that they were relying

on the validity of those claims not specified by the

Nebraska court. We conclude that the Nebraska judgment

order is explained by the same procedures as explains this

particular defense raised by the plaintiffs: the court was

referring to the claims alleged to be infringed by a defend-

ant’s product but had no intention of changing its decision

of invalidity. Blonder-Tongue precludes us from relitigat-

ing this decision.

Even if Blonder-Tongue is potentially a bar to the entire

complaint (as this court holds), plaintiffs seek to avail

themselves of the exceptions left open to them by the

Supreme Court’s decision, Plaintiffs argue that the Ne-

braska court failed to grasp the issues of the controversy

and in particular misapplied Graham yv. John Deere Co.,

383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). The Su-

preme Court cited this case as one example where a trial

court might have completely failed to meet and decide the

issues before it, therefore aborting estoppel. From an

examination of the Nebraska court’s decision, however, it

not only appears that the court cited and purported to

follow Graham v. John Deere Co. (which is all the Supreme

Court suggested it do), but also that the trial court did

0b Raga ONE OMAR AO RBENE Oe me “eine

A21

grasp the issues and render a full and fair opinion on the

merits. Any revision of that decision lay there or in the

Court of Appeals, not here.

Plaintiffs next argue that they lacked the requisite incen-

tive to litigate to a finish in the Nebraska suit. They blame

this partly on the allegedly myopic view of patents taken

by the Eighth Circuit Court of Appeals as compared with

the enlightened view of the Seventh Circuit. This court

need not enter that debate because the Supreme Court

itself discounts the argument: choice of forum militates

against the plaintiffs wha made the choice, albeit without .

realization that they would be universally bound by the

result. As to plaintiffs’ alleged reliance on pre-Blonder-

Tongue decisions when abandoning their appeal, that argu-

ment is contrary to the holding of that controlling decision

which abrogated the prior law.

The subsequent proceedings in the Blonder-Tongue liti-

gation are instructive, as reported in the University of

Illinois Foundation v. Blonder-Tongue Laboratories, Inc.,

334 F.Supp. 47 (N.D.IIl 1971), (pending in the Seventh

Circuit Court of Appeals, No. 71-1829). Although Judge

Hoffman in that case had initially upheld a patent which

had been previously invalidated by an Iowa federal court,

and although the Seventh Circuit had affirmed Judge

Hoffman’s decision, upon remand he applied the Supreme

Court’s decision and entered summary judgment for the

defendant on the basis of the Iowa court’s prior judgment

of invalidity. In doing so he rejected the argument that

the second case involved different claims than the first one,

considered the exceptions left open by the Supreme Court,

and found them unsatisfied, as this court does in the case

at bar. This result, incidentally, conformed to that reached

by the Eighth Circuit Court of Appeals which had in the

meantime affirmed the Iowa court.

A22

Plaintiffs attach a number of affidavits to their brief to

demonstrate a lack of crucial evidence and witnesses in the

Nebraska litigation allegedly not due to the fault of the

plaintiffs. What plaintiffs really argue is that the attorneys

(and plaintiffs) in the Nebraska law suit did not uncover all

of the existing evidence during the seven years that the

suit was pending. Much of the information allegedly newly

discovered from the defendants in this cause was a matter

of public record or was otherwise known to plaintiffs, and

most if not all of it was in existence and discoverable during

the Nebraska litigation. If plaintiffs could demonstrate that

the pending litigation was made possible by new facts or

change of circumstances which did not exist at the time of

the trial in 1969, their argument under this point might have

merit. But as it is, the argument merely says that plaintiffs’

attorneys in the present suit believe they could do better by

a second effort. To litigate this issue here would be a step

backward toward trial by combat and is not what the Sup-

reme Court intended.

In the last analysis, the Supreme Court has told the

federal judges to decide questions of collateral estoppel in

patent cases on the basis of the trial court’s sense of justice

and equity (402 U.S. 313, 91 S.Ct. at p. 1445). The justice

in this matter is pre-empted by the Blonder-Tongue decision

itself, together with the exceptions mentioned therein and

this court’s determination that the decision is to be applied

retrospectively. 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 deposition testimony. They

went to trial and lost on the merits after a full and fair

wt inte sa CO PRTREY TF on be

A23

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 un-

fairly by the law.

It is therefore ordered, adjudged and decreed that defen-

dant’s Motion for Summary Judgment is granted and judg-

ment is entered on the Complaint in favor of the defendants.

BOURNS, INC., a corporation, and Marlan E. Bourns,

an individual,

Plaintiffs,

Vv.

DALE ELECTRONICS INCORPORATED,

a corporation, Defendant.

Civ. No. 01432.

United States District Court,

D. Nebraska.

Dee. 29, 1969.

MEMORANDUM

RICHARD E. ROBINSON, Chief Judge

This matter was tried to the Court without a jury. The

Court has been presented with testimony, documentary

evidence, depositions and a series of briefs and is now ready

to announce a decision, making the following findings of

fact and conclusions of law.

Jurisdiction is vested in this Court by virtue of 28

U.S.C.A. § 1338(a), plaintiff, Bourns, Inc., and Mr. Bourns

individually being citizens of the State of California and

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defendant, Dale Electronics, Inc., being a citizen and having

an established place of business in the State of Nebraska.

Thisis an action for infringement of plaintiffs’ patents num-

bered 2,777,926, 2,935,716, 2,953,763, 3,161,849 and 2,898,569.

Defendant asserts by way of defense that the patents are

invalid and non-infringed. It also defends by attempts to

establish misuse, concealment during the formulation of

military specifications and laches.

Certain motions have been made since trial and should be

disposed of prior to stating findings of fact and conclusions

of law. Defendant filed a request for oral argument for the

purpose of allowing the parties an opportunity to sum-

marize their respective positions. Because this case has

been thoroughly briefed by each side the Court saw no

need for further argument and orally so notified the parties.

For purposes of the record that motion is now overruled.

Plaintiff has also filed two motions to reopen trial and to

offer additional evidence. Plaintiff’s first motion relates

to a pamphlet which plaintiff claims would state that teflon

would be a material suited for use as a slider. Defendant

states that should such case be reopened it would then have

to attack the publication foundationally and then possibly

present a countervailing opinion. The second motion relates

to the admission into evidence of a letter which would be

offered to show proof of the concept that compliance with

military specifications does not require infringement. De-

fendant again states a wish to attack foundationally as well

as further reasons for cross-examination. Because, as will

later appear in this opinion, the Court does not believe the

material presented to be of such a controlling nature as

would probably induce a different conclusion the motions

will be overruled. Neither motion and the evidence which

may be admitted would effect the decision as written and

therefore no good purpose would be served by prolonging a

matter in which a decision is long overdue.

he is

A25

It has also come to the Court’s attention that the entry

into evidence of plaintiff’s exhibit 105 was not allowed after

certain deletions were made. No objections were received

after the deletions. For the record that exhibit should have

been received and the record should now so indicate.

Patent No. 2,777,926.

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 contention, among

others, is that this patent is obvious. Non-obviousness is an

element necessary for patentability under 35 U.S.C.A. § 103.

The Court recognizes the presumption of validity as a result

of allowance of the claims by the patent office and that the

burden rests heavily upon the defendant to overcome that

presumption in order to obtain a favorable decision. Su-

perior Concrete Accessories, Inc. v. Richmond Screw An-

chor Co., 246 F.Supp. 104 [W.D.Mo. 1965] aff’d 369 F.2d

353 [8th Cir. 1966]. However, this presumption will not

stand in the face of compelling facts. “In such a case the

court is not obliged to yield its judgment to a presumption

which merely arises from the patent itself.” American

Infra-Red Radiant Co. v. Lambert Industries, Inc., 360

F.2d 977 [8th Cir. 1966]. 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. Once

having determined its essence it is then necessary to estab-

lish, among other elements, whether the patent, as defined,

is obvious using the guidelines iaid down by the Supreme

Court. Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684,

15 L.Ed.2d 545 [1966] and restated by the Eighth Circuit in

National Connector Corp. v. Malco Mfg. Co., 392 F.2d 766

[8th Cir. 1968].

The basic instrument involved in this litigation is a lead-

screw-adjusted potentiometer [LSAP] which has for its

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A26

general purpose adjustments to tune a circuit to a desired

result. The first question is then, what is the essence of

the patent. A patent is limited to the invention described in

the claims approved read in light of the specifications,

Motion Picture Patents Co. v. Universal Film Mfg. Co.,

243 U.S. 502, 37 S.Ct. 416, 61 L.Ed. 871 [1917]. The Eighth

Circuit has further stated that:

“[A] patent is not a mathematical measurement. It is

a conception reached by consideration of the combined

effect of the state of the art, the contributions as

revealed in the language of the patent to one skilled

in the art, and any limitations imposed and accepted

during the progress of the application through the

Patent Office.” General Motors Corp. v. Kesling, 164

F.2d 824, 832 [8th Cir. 1947].

It is helpful in order to fully understand the scope of the

patent as well as its validity to state the factors which

distinguish each claim from the others. Claims 1, 2, 14 and

15 all contain basic elements of a potentiometer. They all

contain a housing member having two opposite, substan-

tially flat sides, a resistance element, conductor [claim 1

only], a slider, a screw to move the slider with spring con-

tact members on the slider and a means for making an

external connection [Claims 1 and 2] through a side or

end of the housing or an opening extending transversely

through the housing to receive a mounting post.

Claim 11 is similar to the above claims except that there

is no housing stated and there is added “a pair of upstand-

ing portions at opposite ends thereof.” It also contains a

“means engaging said screw means to prevent longitudinal

movement thereof while permitting rotation thereof”; also

a “means restraining the slider against rotation.”

Claim 20 has the basic elements found in 1, 2, 14, and 15

but adds to that, without mention of mounting holes, that

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A27

the resistor is capable of being “adapted to be assembled in

juxtaposition with other like resistors.” This description

presumably explains the size, configuration and ability of

the devices to be stacked or mounted easily either alongside

or on top of each other.

Claim 16, while also similar, includes language that the

cover cooperated with the housing to form a conduit in one

side of the housing.

Throughout all except claims 16 and 20 reference is

made, in addition to or in conjunction with what has been

already stated, to the mounting holes or openings which

generally extend transversely through said housing per-

pendicular to the flat sides and is used to receive a mount-

ing post in order to permit close and rapid assembly.

Claims 1 and 2 are somewhat different in language in that

there are holes both perpendicular and parallel to the flat

side portions still having the same purpose of close and

rapid assembly.

Commencing with the history and progress of this appli-

cation through the patent office as finally embodied in claims

1, 2, 11, 14, 15, 16 and 20, it provides some insight into the

scope of the patent. Bourns initially submitted eighteen

[18] claims all of which were rejected. The Patent Ex-

aminer in so ruling relied primarily upon and cited patent

number 2,357,433 [the Side Patent] stating that the Bourns

926 patent was unpatentable over the prior art. Of the

original eighteen [18] claims Bourns amended two [origin-

ally claims 2 and 3 and now claims 1 and 2]. These claims

were amended to include mounting holes which were placed

on adjoining sides to permit close and rapid assembly with

other variable resistors. Also additional claim 22 [present

claim 11] was submitted without any provision for mount-

ing holes. Claims 2 and 3 were accepted [becoming claims

1 and 2] and original claim 22 was amended to include the

A28

mounting holes. Also, new claims 29, 30, 31 and 38 which

subsequently became 14, 15, 16 and 20 respectively were

also submitted. Claims 29 and 30 included mounting holes

but were different to the extent that not only was there an

opening but that opening extended completely through the

housing enabling the receipt of a mounting post. Original

claims 22, 29 and 30 were accepted and became 11, 14 and

15. Claims 31 and 38 were rejected. Claim 31 [now claim

16] was then amended to include a housing and its cover

which formed a conduit on one side of the housing. After

the amendment that claim was also accepted. Claim 38 was

also amended. It read closely upon the Anderson and

Dietrich patents [see file wrapper of 926 patent] and after

minor wording changes was also accepted. It originally

contained functional language pertaining to the mounting

holes.

From a reading of the allowed claims and the history of

the patent as it passed through the patent office it seems ap-

parent that the mounting holes are the elements [excepting

claim 16] of the patent which the Patent Examiner believed

to be the essential feature which made the patent accept-

able. The patent office cited the Side Patent as containing

all of the elements of the Bourns ’926 patent until the

amendment to include the mounting holes or a rearrange-

ment of the parts to allow an opening extending completely

through the housing. Whether the Patent Examiner be-

lieved the mounting holes themselves to be unique or be-

cause of the arrangement of the components of this specific

device to allow room for the mounting holes it is not nec-

essary to decide. This Court believes both interpretations

require a decision rendering the patent invalid.

Even if the history of the patent’s progress would not

be sufficient to show that the essence was principally a

rearrangement of components of a device, not in itself

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A29

patentable, which would allow for ease and flexibility in

mounting, the statements of the inventor himself should

further show beyond doubt that the device was not patent-

able. An inventor’s own appraisal of what he considers to

be the nature of a patent is of prime importance and is to

be given great weight. Goodwin v. Borg-Warner, 157 F.2d

267, 269 [6th Cir. 1946]. See also Deller’s Walker on Pat-

ents 2d ed., Vol 4, § 228 [Baker, Voorhis 1965]. The in-

ventor, Mr. Bourns, stated during the course of the trial

that, after returning from a business trip, where there were

some objections to the means of mounting the device, ‘he

caused the device’s components to be rearranged in order

to allow for the mounting holes passing completely through

the housing without altering the overall size. He further

states, later in the record, that the essence of his invention

and his contribution to the art was in “taking all these in-

compatible parts and changing their size and proportion

and bringing them together in a single embodiment” [Rec-

ord pp. 138, 139].

A further remark should be made regarding the language

of the patent claims and the history of the patent. Plaintiff

has claimed that there are additional advantages or attrib-

utes to the LSAP. He claims self-locking adjustment, im-

munity from shock, and ease of adjustment combined with

its miniaturization in order to conserve space. While these

may be attributes they are not included in the claims. This

situation is thus similar to that found in National Con-

nector Corp. v. Maleo Mfg. Co., 392 F.2d 766, 769 [8th Cir.

1968] where the Court said that while such factors may

be asserted to be attributes they are outside of the specific

claims of the patent itself. The Circuit Court there stated

that the scope of the patent must rest upon the claims as

stated and accepted by the patent office. Even though it

may have other inherent attributes, they are not within the

A30

scope of the Patent. It should also be stated that Malco

recognized that the use of “subtests”, such as are here con-

cededly present [great commercial success and a need for

such a device in the trade] are not persuasive “if prior art

anticipates or otherwise makes obvious the attributes of the

improvement involved”. National Connector Corp. v.

Malco Oo., supra, at page 769.

Once having discussed the language of the claims, and the

evidence relating to the scope and essence of the patent as

adduced from the history of its passage through the patent

office, it now becomes necessary to pass to another area for

consideration, namely, the state of the prior art at the time

of the claimed invention.

The evidence and facts below presented which relate to

the prior art have been considered to determine if there is

any reasonable construction which may be given to the

patent claims which would allow the Court to declare it

valid. The prior art is also considered to limit the scope

of a patent if there are some grounds for declaring it valid.

Defendant has presented numerous patents in addition

to those cited by the patent examiner. In themselves the

patents cited by the Examiner are persuasive as to what

the limits of the 926 patent should be. However, with the

limits defined, as deduced from the patent application, then

defendant’s presentation of numerous additional patents,

which read on the patent as defined and which have not

been cited by the Patent Office, considerably weakens if not

dissolves the presumption of validity.

Bourns Model 115 CT.

As testified by plaintiff’s witness, Mr. Hardison the

Bourns 115 CT potentiometer was basically the same as the

926 patent [mounting holes excluded for the present] with

the exception of the push-pull rod type of mechanism rather

A31

than the leadscrew. This difference did provide, in the 926,

greater measurement accuracy and resistance to vibration.

However, even though plaintiff’s device shows greater

ability to exact fine measurements and resistance to vibra-

tion these are not factors contained in the claims and can-

not therefore be considered as part of patent to be pro-

tected.

The Kiefaber Patent.

This patent would seem to fill any gap in the state of

the art because of the presence of the leadscrew rather than

a push-pull rod. Mr. Hardison testified that the leadscrew

in the Kiefaber patent had essentially the same purpose as

the leadscrew in the 926 patent. In addition, this patent

contained many of the elements contained in the 926 patent,

namely, a base member, conductor, resistance element,

screw means to prevent longitudinal movement, slider hav-

ing threaded engagement with the screw, spring contact

members on slider for wiping resistance element, means for

restraining the slider against rotation and where the turn-

ing of the screw causes spring contact members to travel

over said resistance element and conductor. This patent

then, with the exception of the mounting holes and possibly

the size of the device, reads extremely close to the ’926

patent.

Defendant has also entered in evidence the claims and

characteristics of many other patents. The Thompson

patent has similarities in that it has a housing resistance

element, slider with spring contact members and a means

for making external connections. This patent as well as

those above cited and the many also presented bear a suffi-

cient resemblance in purpose and design that there is no

room in the art for any interpretation of the claims of the

926 to sustain its validity unless it may be found in the

A32

reorganization of the components or in the mounting holes.

The mounting holes would seem to be the only gap in the

art where a nonobvious device could be held patentable.

Now, regarding these mounting holes, defendant has

shown that the Bourns 115 CT device has single holes

which are made to receive mounting posts and screws which

would secure the device to another instrument. These

holes, however, as defined, do not allow for an opening

extending transversely through the housing which would

then be capable of receiving a mounting post. The labora-

tory potentiometer entered as evidence to show similarity

to the 926 has mounting holes which essentially amount to

screwholes in the legs but this is a far cry from a hole

passing entirely through the device and thus being capable

of receiving mounting posts. The prior art here presented

does not evidence that type of mounting hole passing en-

tirely through the device. This is the case in some of the

claims of the ’926 patent.

Thus reviewing the limitations resulting from the amend-

ments to applications made to the patent office after pre-

vious rejections of claims, together with an interpretation

of the language in the claims as stated by persons skilled

in the art as they relate to the wealth of prior art in the

field, it is clear that the 926 patent in order to be valid

must be held to be specifically and narrowly defined and lim-

ited by the claims. As stated, the evidence revealed readings

on the prior art which were recognized by the patent exami-

ner which resulted in their initial rejection. Subsequent

amendment of claims, in order to escape rejection, as ear-

lier outlined, then resulted in a limitation by amendment.

See Deller’s Walker on Patents, 2d ed., Vol. 4 § 234 [Baker,

Voorhis 1965]. The language of the claims reveals readings

on the prior art in addition to that found by the patent

examiner and if this patent is to be declared valid it must

A33

be narrow, so narrow as to be limited by the later amend-

ments and the state of the prior art. This Court believes

that, by the limitations evidenced in prior rejections and

the interpretation by experts of the language as it relates

to the prior art, fortified by the statement of the inventor

of what he believed the essence of the patent to be, the

patent to be valid must rely upon its size or composition

which allowed for rapid mounting with ease of adjustment

and in some of the claims on ability of the device to be

mounted in close proximity to others. The language of the

claims which calls for a hole passing transversely through ©

the housing is related to size and composition. It is nothing

more than a rearrangement to allow a pole to pass through.

In itself it cannot be claimed that a hole for mounting with-

out some other difficulty or definition is sufficient to rise

to the dignity of a patent. The above remarks relate to all

of the claims except 16 which is to be treated separately.

Once having reached a conceptual rather than a mathe-

matical formula type understanding of the nature of the

patent, if we were to apply the test for obviousness as laid

down by the Eighth Circuit in the Malco decision, assum-

ing, as in that case, novelty and utility were established this

patent could not be declared valid. The “scope and content

of the prior art,” already indicated by the Thompson,

i Kiefaber and Bell as well as others, prevents any broad

; construction. If the claims are given a limited and narrow

construction as earlier stated which this Court believes to

be the true construction plaintiff is precluded from relying

upon a difference in configuration to allow mounting holes

extending completely through the device or by stating the

purpose of this configuration to allow rapid assembly or

the devices to be placed in juxtaposition with each other.

“Changes of mere form, proportions or size will not sustain

patentability.” National Connector Corp. v. Maleo Mfg.

Co., 392 F.2d 766 [8th Cir. 1967]; Gerner v. Moog Indus-

tries, Inc., 383 F.2d 56 [8th Cir. 1967].

sallidsdestsccaace aaa

A34

In regard to claim 16, it was continuously rejected by the

patent office until the language of the claim was amended

to include that a cover for the device cooperated with the

housing to form a conduit in one side of the housing. Until

this change the language is essentie!ly the same as that of

the other claims less reference to mounting holes. In light

of this history, this Court finds it hard to believe that the

laying of wires in an open slot or their passing through a

hole is such a unique design as to rise to the dignity of a

patent. This writer would have to agree with the expert

witness that the advantages of this aspect would be appar-

ent to one skilled in the art of fabricating such devices.

There is therefore no validity to claim 16 and the ’926

patent is held to be invalid.

The 3,161,849 Patent.

Originally plaintiff based its action upon claims 12, 15,

16 and 17 of the 849 patent. After trial plaintiff, in view

of the trial testimony, concedes claims 15, 16 and 17 are

not patentable after disclosure of the Bourns Patent

#2,935,716. The only claim remaining therefore upon

which to uphold the validity of the patent is claim 12.

Defendant’s thrust at this claim of the patent also cen-

ters on its invalidity. Defendant’s attack is fourfold. It

claims obviousness in light of previous similar patents;

prior use by virtue of testimony of a Mr. Elliot who

allegedly manufactured and sold similar instruments prior

to the conception of the ’849 patent; admissions of inva-

lidity of claims 15, 16 and 17 should also be applied to

claim 12, and finally laches.

After a review of the evidence which shows the simi-

larities between the ’849 patent and all of the prior patents

and the devices allegedly manufactured and put into cirecu-

lation prior to the ’849 patent, the validity of this patent

ES EOS eee

A35

hinges upon certain language in the Second Means of claim

12. It reads: “A terminal device comprised in said ter-

minal means being constructed and arranged as a bearing

to rotatably support the first end of said leadscrew and

serving to conduct electrical current conducted by the lead-

screw.” It is the plaintiff’s apparent claim that this is the

factor which distinguishes his device from the prior art,

that is, the performance of a double function of rotatable

support and conducting electricity by the terminal means.

Without an undue detailed statement of the evidence it is

sufficient to state that the state of the prior art and the

statements of individuals experienced in the field as to what

would be obvious to someone knowledgeable in the field

demonstrates striking similarities with the patent here

claimed. The Semple and Kiefaber Patents, as explained

by experts in the field together with designs and expert’s

explanations of devices, conceptualized and reduced to

writings and drawings prior to any conception of this pat-

ent, compel the holding of the ’849 patent as invalid.

There are Three Means which make up claim 12 but the

First and Third Means contain nothing more than the

standard elements of a leadscrew adjusted potentiometer

and thus based upon findings as to this patent and the ’926

do not distinguish the devices there explained from the

prior art. Discussion is therefore limited to the Second

Means of claim 12.

Defendant claims that when plaintiff declares claims 15,

16 and 17 to be invalid they then enter into the public do-

main. Once they have entered it is his contention that

nothing remains of claim 12 which is not contained in 15,

16 and 17 and is therefore invalid. The Court does not

believe that this contention in itself is sufficient to render

claim 12 invalid. A reading of the language of 15, 16 and

17 does not reveal the claim of a double function of the

| A36

terminal device mentioned in claim 12. The Court does note

however and as was noted by the Seventh Circuit Court

of Appeals in Hoover Company v. Mitchell Manufacturing

Company, 269 F.2d 795, 803 [1959] that “this is another

ciroumstance which detracts from the contention relative to

the meticulous care which was exercised in the Patent

Office” and that therefore it will effect the presumption of

validity.

The next of defendant’s contentions relates to anticipa-

tion as found in 35 U.S.C.A. § 102 [a]. Again it is apparent

at the outset that there is a heavy burden upon the party

attempting to establish prior use, FMC Corp. v. F. FE.

Myers & Bro. Co., 384 F.2d 4, 10 [6th Cir, 1967]. In light

of the publications with accompanying design charts and

the testimony of the producer and other experts in the fleld

the record is clear and the burden has been met.

The claim of a prior use centers upon two potentiometers

produced by a Mr. Elliot while associated with California

based Wellan Corporation. Plaintiff admits conception and

first drawing of its patent to be about February Ist, 1956,

Defendant claims prior use during 1954 and 1955, The two

potentiometers upon which this contention centers are de-

scribed in the record as Exhibits A-78 and A-81. Plaintiff

contends that while the drawings of the construction of

A-78 device are sufficient to show the similarities of con-

struction detail there is not sufficient evidence to meet the

burden of proving prior manufacture and sale. The con-

tentions regarding the A-81 device are just the opposite.

Plaintiff does not contest ample evidence of prior use but

contends that the evidence of construction similarity is not

sufficient to meet the burden.

The evidence relating to the construction of the A-81 de-

sign centers upon freehand drawings by Mr. Elliot made

from memory just prior to the trial. He also had available

A387

detailed sketches of the A-78 design which contained basic

similarities but to which were added certain improvements

then embodied into the A-81, This Court determines that

the testimony of Mr. Elliot and his memory sketches are

sufficient to meet the burden of proving anticipation prior

to the conception of the Bourns '849 patent. The evidence

relating to the construction of the A-78 design is likewise

suflicient. Both devices contain the basic potentiometer

equipment, are sealed against humidity ete, have a “hot

leadscrew” and have a terminal device which both rotatably

supports the leadscrew and serves to conduct current from

the leadsecrew. Regarding the prior use of these devices no

question arises as to the A-81 as the plaintiff concedes, and

the evidence amply supports, its prior use, Plaintiff con-

tests, however, the prior use of the A-78. Mr. Elliot testi-

fied that there were limited sales of the A-78 prior to the

A-SI, he states that they were sold to at least four com-

panies and that numerous samples were distributed. He

states, with no evidence to the contrary, that it was the

practice in the business to distribute some samples in order

to generate interest in the product. Mr. Elliot further

testified that he revealed the components and a description

of the A-78 to a Mr. Butler prior to 1956. Mr. Butler testi-

fied as to the time of a disclosure but could not specifically

confirm or deny the exact potentiometer or its exact com-

ponents other than that they were similar. The Court

believes however that Mr, Elliot’s statements of prior sale

and his statements regarding the disclosures to Butler con-

firmed generally by Butler establish prior use even though

records of sale were unable to be produced.

Defendant has also claimed that the state of the art prior

to th» ’849 patent establishes obviousness. As earlier stated

the Kiefaber patent and the Semple patent, together with

the testimony from Mr. Hardison relating to these patents

and testimony from Mr. Carter as to what equipment or

4

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.

A38

elements of a potentiometer would have been obvious to one

engaged in that business, establish defendant’s contention.

Plaintiff’s defense to this claim also centers around the

language previously stated from the Second Means of claim

12 pertaining to the terminal device having a double func-

tion. The remaining features of the ’849 patent are all

obvious in light of the prior art evidence. See Mr. Hardi-

son’s testimony concerning the Kiefaber patent [R. pp. 356-

58] and Semple patent drawings [A-170 to 186]. Regarding

the double function terminal, Mr. Hardison specifically

testified that Kiefaber performed both functions. Any

claim as to reduction in size and configuration is without

merit as previously discussed in regard to the ’926 patent.

Additionally, it may be seen from examining the drawings

of the Elliot designs that those terminals accomplish both

functions. The one factor not previously discussed is the

reference to a sealed and insulated housing. This is present

in the Semple patent. Additionally, Mr. Carter testified that

it would be obvious to a designer in the field to enclose the

device to protect it from foreign matter and therefore prior

art. Accordingly and without reaching the issue of laches

the ’849 patent is held to be invalid for either one or both

of the above contentions.

The 2,953,763 Patent.

Only one claim [claim 6] is in issue under the ’763 patent.

The claim states an improvement upon the basic ’926 patent

and involves the prevention of “end play” coupled with a

more rapid assembly process for these precision potentio-

meters. By the use of the bowed spring with a “U” shaped

notch there is a bearing or tension placed upon the lead-

screw which holds it firmly in place as well as allowing, after

preassembly of the leadscrew and wiper, easier and more

rapid assembly by workers on the assembly line. Defendant

claims the patent to be invalid because of the prior art.

Ss ANA EE ONPG LOE LEG) PE OEE OE

A39

The Court believes that defendant’s presentation of prior

patents which have similar functioning as explained by the

experts is dispositive of the issue of invalidity in its favor.

Prior to the putting into practice of the ’763 patent there

were devices in the potentiometer field and somewhat re-

lated fields [to be discussed] which had for a purpose,

although not their sole purpose, the placing of tension or

pressure upon a shaft or leadscrew to prevent movement

or vibration. See “O” Ring used by Wellan Corporation

[previously discussed and held to be prior art in conjunc-

tion with the ’849 patent] and Fay patent 2,717,983.

Regarding the Fay patent the plaintiff does not seriously

contest the similarities between it and claim 6 of the ’763

patent. A study of defendant’s exhibit A 192-10 [fig. 2] and

a reading of the Fay specification reveals a “U” shaped clip

and a purpose of bringing tension upon the shaft in order to

reduce “end play.” There are still however certain ques-

tions remaining to be answered. Does the Fay patent also

cover the advantage of rapid assembly? Would it be obvious

to substitute the “U” shaped clip in a potentiometer when

the Fay patent is from a different although related elec-

tronic field?

Mr. Carter, defendant’s expert, testified that it would be

obvious to transfer the Fay “U” shape to an Oler patented

device which was in the potentiometer field and further

stated that it would be obvious in the situation where the

desired effect was a speed up in assembly to substitute the

Fay function. This testimony was substantially uncontra-

dicted. It was pointed out however that while the Oler

patent’s function would appear and was stated to have

brought tension upon the shaft or leadscrew it did not. It

was however, still a device in the potentiometer field. Mr.

Carter’s testimony therefore illustrates that the transfer

of a function from the similar field in which the Fay patent

initiliiessiteieaaae ae i

A40

is found to the potentiometer would be obvious in that it

would speed up assembly and place tension on a leadscrew

or shaft to reduce motion and vibration.

Regarding the Wellan Corporation patent, as found in

exhibit A-78 testimony was received that the “O” type ring,

in addition to providing a seal from foreign substance, also

acted to prevent movement of the leadscrew. While this

patent then has the capacity to prevent vibration it could

not be rapidly assembled. Were this patent then relied upon

to solely represent the art prior to the ’763 patent the ’763

patent would be left with the changing of what was before

an enclosed “O” Ring to an open “U” ring so that it can be

more easily assembled. Mr. Elliot, former Vice President of

both Wellan and Dale, testified [A-349 pp. 49-55] by way of

deposition that there are many instances of “U” shaped

springs used on shafts. His deposition would indicate this

to be a common design practice and should a person desire

to place the spring later in the assembly that the open “U”

would be the more common and practical design. The

change, therefore, as the Court understands the facts, is that

the “U” shape is common design not requiring any great

expertise or great transition from the “O” Ring. Indeed

even the “O” Ring itself is no great mechanical achievement.

Mr. Elliot compares the spring tension strip pressing

against the housing as a rather common practice similar to

springs found in automobiles and chairs to prevent move-

ment and vibration.

The Court therefore finds that the ’763 patent is obvious

under 35 U.S.C.A. § 103, even in light of the presumption

against invalidity, when compared with the prior art as

found in the Fay patent and when it is found that it would

be obvious to one skilled in the art to transfer the function

of the “U” shaped clip of that patent to a device like the

’763 in the potentiometer field. The test for transition from

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A41

one field to another seems to be whether the prior art relied

upon is so remote as to require invention to make the nec-

essary substitution or whether the investigators would

naturally have looked to the field of the Fay patent for

help. In re Shapleigh, 248 F.2d 96, 45 CCPA 705 [1957];

General Metals Co. v. S. K. Wellman Co., 157 F.2d 505 (6th

Cir. 1946]; In re Schneider, 47 F.2d 970 [C.C.P.A. 1931].

Even without Mr. Carter’s testimony it would seem obvious

to the Court to search a related electronics field for a device

to control vibration and speed of assembly. It is not the

type of a function which would be peculiar to a particular .

type of instrument but rather one that would be used in a

variety of instruments all having the desired effect of con-

trolling vibration. Mr. Elliot’s statements of the basics of

the principle involved also support this belief.

The Court also finds, separated from the Fay patent, that

the Wellan patent as found in A-78 has the characteristics of

vibration prevention as found in the ’763 patent and at an

earlier date than the ’763 [as discussed with the ’849 patent]

and that the cutting out of a slot in the “O” Ring to form a

“U” and thus provide ease of assembly is not so nonobvious

as to be patentable. The “O” Ring itself is not even non-

obvious. [See again Elliot dep. Ex. A-349 [pp. 49-55].

Under the principles as enunciated in Malco either the prior

art of Fay or Wellan coupled with the non-inventiveness of

a strip spring open at one end because it would be obvious

to one skilled in the art require this Court to hold the patent

invalid.

Patent # 2,898,569.

Claim number three is the only claim in issue under this

patent. At the outset the Court holds that the patent is

invalid. The prior art totally reads on the claim. Defen-

dant’s argument relating to prior art centers upon a Bourns

A42

patent # 2,860,217. Plaintiff does not attack the fact that

the '217 and ’569 patents have elements that do substantially

the same work in substantially the same way as required by

85 U.S.C.A. § 102. In order that there be no doubt this

Court holds that they do have elements that do substantially

the same work in substantially the same way. The Court

would place particular emphasis on the similarities of a

plastic slider block of a resilient material which is self-

threading or capable of being self-threading and which

rotates around the leadscrew.

What plaintiff does contend, however, is that the ’217

patent is not prior art. Again, as this Court understands

the rules of priority governing patents it holds that the ’217

patent is prior art. The matter revolves around the dates of

conception and reduction to practice of the respective

patents. The essential facts as found in the evidence show

that Mr. Royce, the inventor of the ’569 patent, started work

on the invention in December of 1955; that the date of con.

ception was claimed as mid-1956 at the earliest; and that it

was reduced to practice at the earliest in the spring or sum-

mer of 1957. Regarding the ’217 patent the only date here

important is November 19, 1956, which is the filing date of

that patent.

It is the rule that the filing of an application with the

patent office is constructive reduction to practice. Deller’s

Walker on Patents, 2d ed. Vol. 1 § 47 [Baker, Voorhis 1964].

The ’217 patent was therefore, at the latest, reduced to prac-

tice on November 19, 1956. Defendant admits that the ’569

patent was not reduced to practice until the spring or

summer of 1957. Were reduction to practice to be the sole

test of what constitutes prior art the ’217 patent would then

obviously be prior. The fact that the inventor of the 569

patent had no personal knowledge of the anticipating matter

when his patent was reduced to practice is immaterial. He

Se A ke TRL

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A48

is presumed to know the prior art even if he had no actual

knowledge. Deller’s Walker On Patents, 2d ed., Vol. 1 § 73

[Baker, Voorhis, 1964].

The first to reduce to practice is not, however, always the

first inventor.

“T first conceiver must use reasonable diligence in re-

ducing his idea to practice in order to entitle him to a

patent as against a subsequent conceiver who has first

reduced his invention to practice. If the first inventor

of a device exercises reasonable diligence in reducing it

to practice, he does. not lose his right to a patent be-

cause a second and independent inventor of the same

device may have first put it into actual use. The man

who first reduces an invention to practice is prima facie

the first inventor. However, the inventor who first

conceives an invention will be considered the first in-

ventor if he uses diligence in reducing his invention to

practice. If a rival inventor enters the field, then the

first conceiver must use diligence before, as well as

after, the conception of the invention by the second

inventor.” Deller’s Walker on Patents 2d ed. Vol. 1, §

51 pp. 221-22 [Baker, Voorhis 1964].

Initially the writer notes also that if the burden is upon

the plaintiff to prove diligence from conception he should

also have the burden of showing the date of conception. See

Helene Curtis Industries v. Sales Affiliates, 233 F.2d 148,

156 [2d Cir.] cert. denied, 352 U.S. 879, 77 S.Ct. 101, 1

L.Ed.2d 80 [1956]; United Shoe Machinery Corp. v.

Brooklyn Wood Heel Corp., 77 F.2d 263, 264 [2d Cir. 1935].

Conception is generally defined as the formation in the in-

ventor’s mind of the complete operative invention or as the

formation in the mind of the inventor of a definite and per-

manent idea of the complete and operative invention as it is

thereafter to be applied in practice. Knowles v. Tibbetts,

347 F.2d 591, 593, 52 CCPA 1800 [1965]; R. C. A. v. Phileo

A44

Corp., 201 F.Supp. 135, 149 [F.D.Pa.1961]. As defendant

has pointed out and this Court states, the plaintiff has not

carried its burden of proof regarding the date of conception

of the 569 patent. Plaintiff states the date to be mid-1956

but the evidence for that statement is exhibit A-58B dated

July 6, 1958. That exhibit does not reveal the sophisticated

characteristics claimed in the patent. The Court finds no

other evidence sufficient to indicate conception of the 569

patent prior to the constructive reduction to practice of the

°217 patent on November 19, 1956. Furthermore even if the

569 was conceived first it is still incumbent upon plaintiff

to show reasonable diligence in reducing his idea to practice.

He admits conception not earlier than mid-1956 but further

admits the lapse of approximately a year before the device

was reduced to practice. This burden of showing reason-

able diligence also has not been met. No reasonable excuse

for the delay has been shown nor is any evident. It does not

seem to be unreasonable in this potentiometer field that a

time considerably shorter than one year would be sufficient

to reduce the instrument to practice. Over and above that

the patent application was not filed for another six months

after that. Any attempt to show a date of reduction to prac-

tice prior to the filing date is also a heavy burden which

plaintiff has neglected. See Ritter v. Rohm & Ilaas Co., 271

F.Supp. 313 [S.D.N.Y.1967].

The evidence therefore supports the conclusions that the

°217 patent was first reduced to practice and plaintiff has

failed to meet its burden of showing first conception and

reasonable diligence in reducing to practice. The writer also

states that a year is, under the circumstances of this case

and the field in which this device is found, an unreasonable

delay in reduction to practice. The Court would only further

add that the patent office made no reference to the ’217

patent when allowing the 569 patent and that this fact

Wha vreRy ses —

Pe TPIS VSS RAINES ED Mote we

A45

coupled with any of the above conclusions is more than

sufficient to overcome the presumption of validity attached

to patent office grants of patents.

Defendant has raised other arguments concerning the

validity of this patent and also that it, if it were to be de-

clared valid has not infringed. As has been previously

stated it is important to determine the scope and essence

of the patent. The only claim in issue reads as follows:

“In a construction including a movable member posi-

tioned upon a threaded shaft so that as said shaft is

turned, said movable member is caused to move along

the length thereof by the threads of the shaft, the

improvement which comprises: a movable member of

non-conductive material having sufficient resilience so

as to undergo temporary deformation when in pressure

contact with the threads of said shaft, said movable

member being formed with an elongated opening of

uniform cross-sectional configuration to receive said

shaft, said opening being formed so as to extend en-

tirely around said shaft, said opening being formed so

that at least a part of said movable member is engaged

by said shaft and deformed thereby, the resilient mate-

rial of said member being displaced between the threads

of said shaft down into the space between the crests

and valleys of said threads.”

Plaintiff has not seriously claimed that there is anything

rising to the dignity of a patent as a result of this claim

except that the slider block, made of a resilient material,

has certain qualities not before present in the field which

would lengthen the life of the instrument. Essentially

plaintiff claims that this slider, when it reaches a point

when it cannot move forward any further along the axis

of the leadscrew, but the leadscrew itself continues to turn,

will, when the leadscrew reverses direction either form

new grooves in the block or jump back to the previous

A46

grooves: Thus the material of the slider block would allow

the potentiometer to function after ratcheting has occurred.

While it is not exactly clear whether the use of these

materials actually allows the functioning of the device to

continue it is clear that the flexibility and relative softness

of the material is the reason for any possibly functional

continuation of the device. When comparing the plastic or

nylon material to steel blocks or units through which steel

screws turn it is easy to see that once the grooves of those

types of nuts are stripped there is no possibility of future

operation of the device as is true with a resilient material.

If plaintiff’s discovery works as he claims then the only

real discovery is use after ratcheting in potentiometers.

The use of an elastically deformable material is not new to

this general field. When processing the ’569 patent the

patent office recognized the

“use of a member formed of an elastically deformable

material engageable by the threads of a leadscrew so

as to take an impression of the threads whereby rota-

tion of the leadscrew causes the member to move

lengthwise.” [See Ex A-282 p. 15 citing the Wallin

and Gotschall patents].

There is no new product possessing any greater resiliency.

The patent description states only generally the types of

material and prior art indicates the use of these materials

in many fields where a screw device is inserted into a solid

or pre-formed resilient block but the difference which plain-

tiff claims is that these prior devices never had to cope with

the problem of functioning after ratcheting or at least that

it was not revealed in these prior patents [excluding the

217 patent previously discussed]. This Court is thus faced

with the question of whether or not it would have been ob-

vious to one skilled in the art to use a resilient material as

described in the ’569 patent to prevent a malfunction after

RFit aaa Chaar se Ashe? ot

A47

the block cannot move any further but the leadscrew still

continues to turn? It is essentially an additional claimed

advantage for an old product. Because of the flexibility of

the product it may function even after the grooves of the

block have been at least partially stripped.

In addition to the patents cited by the patent examiner

defendant has presented an additional patent in the poten-

tiometer field [see Zupa patent # 2,802,503, exhibit A-193-

20] and others where the similar basic principle of insert-

ing a screw into a resilient block is utilized [See exhibits

A-193-12, 15 and 16]. While these instruments in the prior

art do not necessarily state the ratcheting effect or even

utilize it they show the similar principle behind ratcheting.

Because the material is flexible ratcheting may occur and

the device may still continue to function. These patents

show the use of the resilient material precisely because it

is soft and will allow the screw to move through and make

it own grooves thereby being self-threading. Merely be-

cause plaintiff’s claimed use continues to make new grooves

or is flexible enough to continue to give under added pres-

sure does not so distinguish his use that it is not, in the’

belief of this Court, obvious to one skilled in the art. The

material is the same. The principle still is the same in

allowing additional grooves because of the relative softness

of the material. What plaintiff is claiming therefore is

merely the making of more grooves after the block can no

longer move forward and then additional grooves may be

made when the rotation of the leadscrew is reversed. The

Court should only further note, in order to be perfectly

clear, that the claim of a continuous function after ratchet-

ing is sufficiently rebutted in order to overcome any pre-

sumption arising from the ’569 patent processing through

the patent office.

A48

' There is one further point which should be discussed. As

has been previously stated plaintiff’s only claimed inven-

tion is functioning after ratcheting. And also, as has been

previously stated, there is no other characteristics present

which would allow the declaring of a patent valid. What

bothers the Court is that it does not believe that claim 3

can be construed to include this claimed essence of the

patent. There is no statement of this ability to function in

this manner after the block runs up against one end of the

instrument body or its ability to function after reversing

the rotation of the leadscrew. If this is the real essence of

the patent why is it not stated in the claim? Furthermore,

as also has been previously stated, if the ability to func-

tion after ratcheting is the real essence of the patent that

ability is merely an extension of the principle of using

elastically deformable material. The patent office specifi-

cally refused to allow certain claims because they read on

other patents using an elastically deformable material, Un-

der the teaching of the Malco case, supra, the process of

the patent through the patent office should be considered.

Here anything based upon elastically deformable material

could not be read into the claim. That consideration cou-

pled with absolutely no statement of the effect which plain-

tiff claims is the crux of his patent would strike the mind

as an afterthought and was not intended by either the

patent office or the inventor to be stated as part of the

claim. Nothing else being novel or not being present in the

prior art the patent is also invalid for that reason.

The Bourns ’569 patent is therefore invalid for any of

the above reasons.

The ’716 Patent.

This patent is an improvement patent on the basic

LSAP. Only one claim, number two, is in issue. The essen-

A49

tial elements of this claim, the patent being commonly re-

ferred to as the “mating halves” patent, are two housing

members which cooperate together to journal the leadscrew

therebetween. Plaintiffs state that in the original design,

which was the 926 patent previously discussed, the lead-

screw had to be inserted through a hole in the housing, then

fed through the slider and finally into a bearing hole in the

opposite end. It now argues that by being able to drop a

pre-assembled shaft and slider in from the top there is a

speed up and vast improvement in the manufacturing proc-

ess. It also claims that, whereas before undesirable end-

play, unnecessary movement, or rattling was difficult to

control, the cooperation of the housing and cover reduces

end-play without the maintenance of a close dimensional

tolerance. The critical words of claim 2 thus are:

“cooperating means on said housing engaging said

shoulder means to prevent endwise movement of said

leadscrew, said other housing member engaging said

shaft to confine the same in place within said notch.”

The patent here in question is allegedly either a divi-

sional or a continuation-in-part patent which would entitle

it to the filing date of the parent application which would

be May 3rd, 1954. If plaintiff is not entitled to this early

filing date then there seems to be little question but that

the patent would have to be declared invalid. Defendant

claims that the patent is not entitled to the early filing date

because of plaintiff’s execution of a false oath; because

there are substantial additions to the divisional application

not found in the parent application; and because the state

of the prior art, namely the Bourns 926 patent, discloses

clearly, even though accidentally, the invention here

claimed.

As earlier stated, if this patent would not be allowed to

be classified as a divisional or continuation patent thereby

A5O

allowing a filing date of May 3rd, 1954, the patent must be

held invalid. Defendant has shown sale of their Dale Type

I units in the summer of 1956 which the evidence shows

to read upon the claim in question and plaintiff has ad-

mitted sales of the infringed patent in the summer of 1954.

If the November 1957 filing date is the record filing date

then the patent is invalid under 35 U.S.C.A. § 102[b] be-

cause of sales and use more than one year prior to the

record filing date of the parent application having been

proved.

The first question then is whether plaintiff’s filing of an

incorrect statement or oath at the time of the filing of the

divisional application is a deficiency which would prevent

the patent from being held valid. What actually occurred

is that plaintiff filed the oath normally filed with an origi-

nal rather than a divisional application which stated the

invention was not in use or on sale more than one year

prior to the filing of that application. The record is clearly

to the contrary. As previously discussed there were sales

prior to November of 1957, the actual filing date of this

patent application.

There is some authority for the proposition that where

there is an amendment to the original application and the

subject matter of the added claim is not substantially

embraced in the original application the absence of an oath

accompanying the amendment is fatal to the patent. George

Cutter Co. v. Metropolitan Electric Mfg. Co., 275 F. 158,

162 [2d Cir. 1921]; Balaban v. Polyfoto Corp., 47 F.Supp.

472 [D.Del.1942]. The situation here, however, is somewhat

different. It is true that the plaintiff filed the wrong form

of oath and represented no use or sales more than one year

prior to his divisional application but in the same applica-

tion stated that this was a divisional application arising out

of a parent application three years earlier and having the

eee Se

ee

A51

heretofore mentioned filing date of May 3, 1954. It would

therefore be reasonable to a’sume that the filing of the

wrong form was a clerical mistake for which the penalty of

declaring the patent invalid should not be utilized. It is not

necessary that an application verify that there was no use

or sales more than one year prior to the filing of the divi-

sional application but only that there was no sale or use

more than one year prior to the filing of the parent applica-

tion. This latter statement would be the reasonable inter-

pretation of what the applicant meant to say and could

reasonably be interpreted in that manner by the patent office

in light of the statement that it was a divisional application.

In those cases holding the failure to file the supplemental

oath it was necessary that there be filed an oath stating that

there was no sale or use more than one year prior to the

filing of the amendments to the original application. With-

out some intentional misrepresentation evidenced plus the

statement that it was a divisional application in the patent

description the Court believes that this technical error is

not fatal to the validity of the patent.

Defendant's second claim of invalidity is based upon the

argument that substantial additions to the divisional appli-

cations were made. It believes that the Patent Office Rules

And Practice § 147.2 and § 147.3 require that the subject

matter of a divisional application be carved out of the

original or parent patent. Defendant first claims that there

are substantial changes between the wording of the final

allowed parent patent and the final allowed divisional pat-

ent. It also claims substantial differences in the figure four

in each of the patents.

The Court does not believe that wording substitution or

changes is the appropriate test. It should be whether the

design is substantially embraced in the statements of inven-

tion or claims of the earlier patent application, not, as

A52

defendant cites, the final allowed patent description, speci-

fication and claims. The final claims and specifications as

allowed, while they may reveal the divisional claim, do not

reveal the divisional claim nearly as succinctly as the

original application for a patent prior to the patent office

requirement that an election be made. At that point it can

be determined whether the divisional claim was revealed in

the parent application. Whether or not the statement of

invention there revealed in the parent application would

anticipate the divisional claim would be an appropriate

test. Walsko v. Smith, 102 F.2d 815 [CCPA 1939]. If the

invention later claimed in the divisional patent is substan-

tially carved out of the parent, regardless of word changes,

then is is entitled to the parent filing date. Coltman v.

Colgate-Palmolive-Peet Co., 104 F.2d 508 [7th Cir. 1939].

“[T}he original application is the mother or parent

application, and all claiming to be her offspring must

show bloodstream connection with her. Unfortunately,

the proof of the exact invention is not always clearly

disclosed by the words used. When the solicitor’s

vocabulary is full to overflowing and words of both

elastic and comprehensive meaning are chosen, it is

difficult to lay down or apply a rule or a test by which

it may be confidently said * * * the application and

claims of a divisional patent, are for ‘the same inven-

tion’ or * * * conform to the original application.”

104 F.2d at 515.

Realizing the difficulty, this Court determines that the

invention claimed in the divisional application is substan-

tially embraced in the statement of invention, specification,

description and claims of the parent application. A review

of the file wrapper of the parent application [Ex A-283]

reveals that on May 31, 1957 the patent office decided that a

restriction was required. Subsequently the applicant made

an election. The letter informing the applicant of the

ABC Li TN SE ATE

Bo PES PO id BSS TE I eth

A53

restriction divided the then existing claims into six groups.

Group five was elected by the plaintiff. Group one, which

then comprised claims 20, 35, 36 and 38, contained, at that

time, similar language to the critical language of claim 2

of the ’716 patent here in question. Claim 36 has almost

identical language to the claim 2 of the ’716 patent. Claims

20, 35 and 38 contain language that would embrace a design

substantially similar to that as stated in claim 35 at least as

far as the critical language previously mentioned. So that

there be no doubt and in order that an issue not raised in

the briefs will not later arise, namely the need for a supple-

mental oath with any amendment, there is also language in

the original claims filed in May of 1954 that will allow the

subsequent amendments here cited to substantially embrace

the original application even though those claims were

originally rejected for indefiniteness. See file wrapper for

the 949 patent, original claims 7, 8, 14. The Court also

states that the drawings as originally filed in 1954 have not

been altered appreciably, contrary to defendant’s argu-

ment. It argues that the figures four have been substan-

tially changed. Any changes that have been made appear

to have been made at the patent offices request for more

exact explanations which would then require some minor

changes in the figures.

This Court therefore holds that any additions or varia-

tions between the parent and divisional application are not

so substantial as to prevent the divisional application from

utilizing the effective filing date of the parent application.

Defendant’s final argument rests on the proposition that,

even though the ’716 patent is entitled to a May 3rd, 1954

filing date, claim 2 of the ’716 reads directly on the structure

shown in figure 17 of the Bourns ’926 patent, which is in the

prior ari prior to the parent application filing date. There

is no reference in the claims, descriptions or specification

A54

of the ’926 to the structure allegedly disclosed in figure 17.

Defendant’s argument rests on the figure alone and a theory

of accidental disclosure.

It has been held that it is immaterial whether the inventor

realizes his disclosure. All that is necessary is the fact that

a disclosure has been made. Deforest Radio Co. v. General

Electric Co., 283 U.S. 664, 51 S.Ct. 563, 75 L.Ed. 1334 [1931].

However, an accidental disclosure is only available as a

prior reference if “clearly made in a drawing.” Application

of Seid, 161 F.2d 229, 34 CCPA 1039 [1947]. It is also the

law that a drawing alone, if it teaches to the art what the

patentee claims in his invention, is sufficient for anticipa-

tion. Des Rosiers v. Ford Motor Company, 143 F.2d 907 [1

Cir. 1944]; In re Boyd, 55 F.2d 493 [CCPA 1932]; In re

Bager, 47 F.2d 951 [CCPA 1931]; Jockmus v. Leviton, 28

F.2d 812 [2d Cir. 1928].

Plaintiff’s basis for validity is reduced to the statement

that this Court is unable to determine from the evidence

that the disclosure, for purposes of anticipation, in figure

17 of tie 926 patent is clearly made within the meaning of

those words as stated in earlier precedent. The disposal of

this issue hinges upon a small area marked with an “X” in

exhibit A-298. If this small piece above the leadscrew is

clearly part of the cover and not intended to be part of the

housing then the remainder of figure 17 clearly discloses the

remaining elements necessary for anticipation. See the tes-

timony of plaintiff’s witness Hardison, record pp. 337-345.

Plaintiff relies on some statements by the defendant’s

witness Carter that “[i]t is not clear whether it is a part of

the cover or not.” [R. 498]. This is the only place the Court

can find in the record some doubt as to whether this piece

was a part of the cover. Even this was later clarified by

Mr. Carter’s statements that the piece as depicted would be

A55

as drawn in figure 17 if it was a separate piece but attached

to the cover. Defendant, as to the remaining evidence suc-

cessfully rebutted any argument that figure 4 and figure 17

of the 926 should have been drawn the same way [plaintiff

claims a draftsman’s error in figure 17] by showing numer-

our differences in design and structure between the two

figures and a reasonable explanation to show figure 17 as

drawn. Plaintiff claims the draftsman’s error but there is

no evidence of mistake or even intent by the inventor it

should be otherwise other than what may be inferred from

other evidence and plaintiff has successfully rebutted any

rational inferences that could be drawn. Furthermore, the

cover is metal and so is the piece in question according to

the patent office guidelines for drawing what is plastic and

what is metal. There is no requirement in the claims that

the cover be one solid piece and it is definite that it is not

plastic as drawn as is the base housing member unless there

was evidence of mistake. The Court therefore concludes

that figure 17 of the 926 patent is clearly disclosed and

anticipates claim 2 of the ’716 patent.

This Memorandum shall constitute the Court’s findings

of facts and conclusions of law under Rule 52 of the Federal

Rules of Civil Procedure.

Counsel shall prepare an appropriate order and submit

immediately.

seeaeansnt : pesumnaetiens - aheaiias

A56

UNITED STATES DISTRICT COURT

For THe

Soutuern District or Iowa

Davenport Drvision

Civil Action File No. 3-695-D

5

The University of Illinois Foundation

vs. ‘ Judgment

Winegard Company

é

This action came on for trial before the Court, Honorable

Roy L. Stephenson, United States District Judge, pre-

siding, and the issues having been duly tried and a decision

having been duly rendered.

It is Ordered and Adjudged that the plaintiff take noth-

ing, and that the action be dismissed on the merits, and that

Winegard Company, defendant, recover of The University

of Illinois Foundation, plaintiff, its costs, exclusive of

attorney’s fees.

Dated at Davenport, Iowa, this 23rd day of June, 1967.

F. E. Van ALstine

Clerk of Court

By Erna HEIFer

Deputy Clerk

A57

JUDGMENT

UNITED STATES COURT OF APPEALS

For Tue Eicuts Circurr

No. 19,000. September Term 1968

University of Illinois Foundation,

Appellant,

vs.

Winegard Company.

AppEAL FROM the United States District Court for the

Southern District of Iowa.

Turis Cause came on to be heard on the record from the

United States District Court for the Southern District of

Iowa, and was argued by counsel.

On ConsiIpERATION WHEREOF, it is now here ordered and

adjudged by this Court, that the judgment of the said

District Court, in this cause, be, and the same is hereby,

affirmed.

September 30, 1968.

A TRUE COPY

ATTEST:

Signature illegible

Clerk, U. S. Court of Appeals

For the Eighth Circuit.

A58

UNITED STATES OF AMERICA

Sovurnern District or Iowa ss.

Davenport Drvision

I, R. E. LONGSTAFF, Clerk of the United States Dis-

trict Court for the Southern District of Iowa, do hereby

certify that the annexed and foregoing is a true and full

copy of the original Judgment on Decision by the Court,

filed June 26, 1967, and Judgment by United States Court

of Appeals, filed April 3, 1969, in Civil Action No. 3-695-D,

University of Illinois Foundation vs. Winegard Company

now remaining among the records of the said Court in my

office.

IN TESTIMONY WHEREOF, I have hereunto sub-

scribed my name and affixed the seal of the aforesaid

Court at Davenport, Iowa, this 3rd day of August,

A.D. 1972.

R. E. Lonasrarr,

Clerk.

By Drange Duncan,

Deputy Clerk.

SAAR LE Se :

A59

UNITED STATES COURT OF APPEALS

For tur Sevents Cimovurr

SepremBerR Term, 1972— Apri Session, 1973

Nos. 72-1741, 72-1742, 72-1743,

72-1744 and 72-1745

TrecHNoGRAPH PRINTED CIRCUITS,

Lrp., and TecHnocraPH PRINTED

Exectronics, INCORPORATED,

Plaintiffs-Appellants, and

Cross-Appellees,

v.

Metuopve Exectronics, Inc.,

Defendant-Appellee,

v.

GTE Avtromatic Exectric Incor-

PORATED,

Defendant-A ppellee and

Cross-Appellant,

v.

Wescor Evectronics, INCORPORATED,

Defendant-A ppellee,

v.

Howarp Ho.tpine Company,

Defendant-Appellee.

4

Appeals from the

United States Dis-

trict Court for the

Northern District

of Illinois, Eastern

Division.

Nos. 62 C 1761

63 C 36

63 C 111

63 C 142

Husert L. Wao,

Judge.

ArcueED June 11, 1973 — Decivep Aveust 27, 1973

Before Kitzy and Sprecuer, Circuit Judges, and Escu-

BACH, District Judge.*

* District Judge Jesse E. Eschbach of the Northern District of

Indiana is sitting by designation.

A60

Srrecuzr, Circuit Judge. The history of these cases

confirms the wisdom of Blonder-Tongue Laboratories,

Inc. v. University of Illinois 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 Elec-

tronics, an American company, wrote to Printed Circuits,

a 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 industry.”

o © *

The infringement actions were based upon three United

States patents relating to methods for the manufacture

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

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

on April 15, 1955, and Reissue No. 24,165 (’165) issued

on June 12, 1956.

1Technograph Printed Circuits, Ltd. v. Methode Electronics,

Inc., 285 F. Supp. 714, 716 (N.D. Ill. 1968) (detailing the history

of the Technograph litigation).

2The manufacturing processes are fully described in Techno-

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

Supp. 1 (D. Md. 1963).

A61

The first trial took place in the District of Maryland in

an action against The Bendix Corporation (Bendix) where,

after 29 trial days, the filing of 1001 exhibits, several addi-

tional 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 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 Circuit affirmed and certiorari was denied by

the Supreme Court. 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. 1964), cert. denied, 379

U.S. 826 (1964).

The plaintiffs represented in other courts that the Mary-

land case was the “test case”® After the test case, the British

company transferred its rights in the patents to the Amer-

ican Company.

The plaintiffs had filed six infringement actions in the

Northern District of Illinois 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

“Tnjeither 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.

3 Technograph Printed Circuits, Ltd. v. Packard Bell Electronics

Corp., 290 F. Supp. 308, 312 (C.D. Cal. 1968). See also, T’echno-

graph Printed Circuits, Ltd. v. Martin-Marietta Corp., 474 F. 798,

804 (4th Cir. 1973).

A62

v. Methode Electronics, Inc., 356 F.2d 442, 448 n.3 (7th Cir.

1966), cert. denied, 384 U.S. 950, 1002 (1966). Upon remand

the four cases were consolidated for purposes of discovery

and trial, were declared to be class actions so far as the

defendants were concerned (T'echnograph Printed Circuits,

Ltd, v. Methode Electronics, Inc., 285 F. Supp. 714 (N.D. Ill.

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 Bendix case in Maryland had been sent

to the United States District Court for the Central District

of California, where 13 actions by the Technograph plain-

tiffs 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 case.* 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. T'echnograph Printed Circuits, Ltd. v. Packard

Bell Electronics Corp., 290 F. Supp. 308 (C.D, Cal, 1968).

‘There is no published record of an appeal from that judg-

ment,

*The court’s order appears as Appendix II, Technograph

Printed Circuits, Ltd, v. Packard Bell clectronics Corp., 290 F.

Supp. 326 (C.D, Cal, 1967),

i

x

8

A638

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 judg-

ment.’ 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 Bendix

case,

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

decided Blonder-Tongue Laboratories, Inc. v. University of

Illinois Foundation, 402 U.S. 313, where the Court concluded

that “7'riplett 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 a plea of estoppel must not be

automatically accepted but that a determination should be

made “whether a patentee 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 Martin-

Marietta 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-Tongue standards for determining whether

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

5 Technograph Printed Circuits, Ltd, v, United States, 370 F.2d

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

ease, the Court of Claims relied upon T'riplett v. Lowell, 297 U.S.

638 (1936) and the possibility of new or additional evidence, 372

F.2d at 978-80,

A64

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 cases 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. Ill. 1972).

Thereafter on February 20, 1973, the Court of Appeals

for the Fourth Circuit affirmed Judge Watkins in Techno-

graph Printed Circuits, Ltd. vy. 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 Bendix a test

case by which they sought to establish the validity of

Eisler’s patents 165, 960, and 697. They now seek to

relitigate the issue of validity as to 697. They failed to

convince the district court in Bendiz 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

® The record brought up to us from Judge Will included 17 vol-

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

depositions, 4 cartons plus 8 folders of exhibits, and a box of “con-

fidential documents.”

Bendia that they did not have a full and fair r-

tunity to litigate in Bendix. Again, we agree with the

district court. We are of opinion that the plaintiffs had

a full and fair opportunity to litigate the validity of

697 in Bendia 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-T ongue, 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

Bendiaz 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 72-1223 (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

case. Plaintiffs have argued that Bendix adjudicated 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. 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,”

A66

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 claims 4 and 10-14 and Bendiz in-

volved 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 Inc. has cross-

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

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

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

vent gross injustice and where fraud and wrong-doing are

clearly proved.” Sarkes Tarizan Inc. v. Philco Corp., 351

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

710. 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,

then printing a negative representation of the pattern upon said

foil, depositing a layer of metal dissimilar to the metal of said foil

upon all exposed parts of said foil, then removing said representa-

tion from the foil, and finally removing all parts of the foil ex-

posed by said removal of the representation by chemical action

attacking the metal of said foil but not said deposited dissimilar

metal whereby said pathway pattern is formed.

“11. The method of claim 10 wherein the negative representa-

tion of the pattern is produced by letterpress printing.

“12. The method of claim 10 wherein the negative representa-

tion of the pattern is produced by offset printing.

“13. The method of claim 10 wherein the negative representa-

tion of the pattern is produced by photo-mechanical means.”

a a i a een ne

A67

Although the defendants rely upon a 1951 statement by

Eisler, 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 “in-

herently 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 been found invalid.” 174 U.S.P.Q. at 299.

In addition, until the Blonder-Tongue decision, the plain-

tiffs were justified in relying at least to some extent upon

Triplett v. Lowell. Thus we find that Judge Will did not

abuse his discretion in declining to find this to be the “excep-

tional” case. We do, however, assess all costs of these

appeals against the plaintiffs.

The judgment is affirmed in all respects.

AFFIRMED.

een moe

a |

CONSTITUTION

ARTICLE I

Section 8, Clause 8. The Congress shall have Power...

To promote the Progress of Science and useful Arts,

by securing for limited Times to Authors and Inven-

tors the exclusive Right to their respective Writings and

Discoveries ;

28 U.S.C. § 1254.

Cases in the courts of appeals may be reviewed by the

Supreme Court by the following methods:

(1) By writ of certiorari granted upon the petition of

any party to any civil or criminal case, before or after

rendition of judgment or decree...

35 U.S.C. § 101.

Whoever invents or discovers any new and useful pro-

cess, machine, manufacture, or composition of matter, or

any new and useful improvement thereof, may obtain a

patent therefor, subject to the conditions and requirements

of this title.

35 U.S.C. 121. If two or more independent and distinct

inventions are claimed in one application, the Commissioner

may require the application to be restricted to one of the

inventions. If the other invention is made the subject of a

divisional application which complies with the requirements

of section 120 of this title it shall be entitled to the benefit

of the filing date of the original application. A patent issu-

ing on an application with respect to which a requirement

for restriction under this section has been made, or on an

application filed as a result of such a requirement, shall not

” ?

ln rt nn

a TREO Me ree ty

Lei Ea TUTTE BETTS i

A69

be used as a reference either in the Patent Office or in the

courts against a divisional application or against the origi-

nal application or any patent issued on either of them, if

the divisional application is filed before the issuance of the

patent on the other application. If a divisional application

is directed solely to subject matter described and claimed in

the original application as filed, the Commissioner may dis-

pense with signing and execution by the inventvr. The

validity of a patent shall not be questioned for failure of

the Commissioner to require the application to be restricted

to one invention.

35 U.S.C. § 253.

Whenever, without any deceptive intention, a claim of

a patent is invalid the remaining claims shall not thereby

be rendered invalid. A patentee, whether of the whole or

any sectional interest thercin, may, on payment of the fee

required by law, make disclaimer of any complete claim,

stating therein the extent of his interest in such patent.

Such disclaimer shall be in writing, and recorded in the

Patent Office; and it shall thereafter be considered as part

of the original patent to the extent of the interest possessed

by the disclaimant and by those claiming under him.

In like manner any patentee or applicant may disclaim

or dedicate to the public the entire term, or any terminal

part of the term, of the patent granted or to be granted.

35 U.S.C. § 282, par 1.

A patent shall be presumed valid. Each claim of a patent

(whether in independent or dependent form) shall be pre-

sumed valid independently of the validity of other claims;

dependent claims shall be presumed valid even though de-

pendent upon an invalid claim. The burden of establishing

invalidity of a patent or any claim thereof shall rest on the

party asserting ‘it.

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A70

35 U.S.C. § 288.

Whenever, without deceptive intention, a claim of a pat-

ent is invalid, an action may be maintained for the in-

fringement of a claim of the patent which may be valid.

The patentee shall recover no costs unless a disclaimer of

the invalid claim has been entered at the Patent Office be-

fore the commencement of the suit.

RULES OF PRACTICE IN PATENT CASES

141. Different inventions in one application. Two or

more independent and distinct inventions may not be

claimed in one application, except that more than one

species of an invention, not to exceed five, may be specifi-

cally claimed in different claims in one application, pro-

vided the application also includes an allowable claim

generic to all the claimed species and all the claims to each

species in excess of one are written in dependent form

(rule 75) or otherwise include all the limitations of the

generic claim.

142. Requirement for restriction. (a) If two or more

independent and distinct inventions are claimed in a single

application, the examiner in his action shall require the

applicant in his response to that action to elect that inven-

tion to which his claims shall be restricted, this official ac-

tion being called a requirement for restriction (also known

as a requirement for division). If the distinctness and in-

dependence of the inventions be clear, such requirement

will be made before any action on the merits; however, it

may be made at any time before final action in the case, at

the discretion of the examiner.

(b) Claims to the invention or inventions not elected, if

not canceled, are nevertheless withdrawn from further con-

sideration by the examiner by the election, subject however

to reinstatement in the event the requirement for restric-

tion is withdrawn or overruled.

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AA AAPOR TES op eeetareatatine OTS heer

1 ane eer.

A71

MANUAL OF PATENT EXAMINING PROCEDURE

(3rd ed. rev. April 1973)

706.03(1) Multiplicity

An unreasonable number of claims; that is unreasonable

in view of the nature and scope of applicant’s invention and

the state of the art, may afford a basis for a rejection on the

ground of multiplicity. A rejection on this ground should

include all the claims in the case inasmuch as it relates to

confusion of the issue.

To avoid the possibility that an application which has

been rejected on the ground of undue multiplicity of claims

may be appealed to the Board of Appeals prior to an exam-

‘

ination on the merits of at least some of the claims pre- :

sented, the examiner should, at the time of making the ;

rejection on the ground of multiplicity of claims, specify the :

number of claims which in his judgment is sufficient to

properly define applicant’s invention and require the appli-

cant to select certain claims, not to exceed the number speci-

fied, for examination on the merits. The examiner should

be reasonable in setting the number to afford the applicant

some latitude in claiming his invention.

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‘ LIBRARY | FILED.

UP

No! SSeaer, u. 2 is73

IN THE j MICHAEL ROBAK, JR..CLEAK

Supreme Eourt of the United States

Ocroser Term 1973

ALLEN-BRADLEY COMPANY,

BECKMAN INSTRUMENTS, INC.,

THE BUNKER-RAMO CORPORATION,

FAIRCHILD CAMERA & INSTRUMENT CORP.,

TRW INC., and

WESTON INSTRUMENTS, INC.,

Petitioners

Vs

BOURNS, INC. and MARLAN E. BOURNS,

Respondents

RESPONSE TO PETITION FOR A WRIT

OF CERTIORARI TO THE SEVENTH CIRCUIT

FILED BY BECKMAN INSTRUMENTS, INC.

Criype F, WiLiian

Rosert L. Harmon

Hume, CLEMENT, Brinks, WILLIAN,

Ops & Cook, Ltp.

One First National Plaza

Chicago, Illinois 60670

Counsel for Respondents

TWENTIETH CENTURY PRESS, CHICAGO 60606

PARNER SARE NTL, EOI RT I TIE RAS OTT EPI MATT UNY EPIC TAY PIM TOM

Oe ee en

NO. 73-644

IN THE

Supreme Court of the Anited States

Octoser Term 1973

ALLEN-BRADLEY COMPANY,

BECKMAN INSTRUMENTS, INC.,

THE BUNKER-RAMO CORPORATION,

FAIRCHILD CAMERA & INSTRUMENT CORP,,

_ ‘TRW ING., and

WESTON INSTRUMENTS, INC.,

Petitioners

Vv.

BOURNS, INC. and MARLAN E. BOURNS,

Respondents

RESPONSE TO PETITION FOR A WRIT

OF CERTIORARI TO THE SEVENTH CIRCUIT

FILED BY BECKMAN INSTRUMENTS, INC.

Respondents, Bourns, Inc. and Marlan E. Bourns (collec-

tively Bourns),’ oppose the petition of Beckman Instru-

ments, Inc. (Beckman) as follows:

1) Beckman’s arguments as to the interpretation of a

judgment and a decision evidences a factual dispute

of interest only to the litigants. This factual dis-

pute does not meet any of the criteria set forth in

Supreme Court Rule 19.

1 The parties have filed cross-petitions; Bourns’ petition has been

assigned docket No. 73-643.

ew TL eS

3

2

2) Beckman’s arguments as to the legal relationship as

between claims of a patent are contrary to the patent

laws (35 U.S.C. §§ 253, 282 and 288).

3) Contrary to Beckman’s arguments there is no con-

flict between the circuits on whether an adjudication

of invalidity as to less than all the claims of a patent

would in subsequent litigaton support a plea of

estoppel as to all of the clams of that patent.

Interpretation of the Dale Judgment

In the Dale case’ the District Court entered the following

judgment:

“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 pre-

judice, and the Amended Counterclaim is sustained to

the extent indicated.”

In its decision the Dale Court began: “Plaintiff relies upon

claims 1, 2, 11, 14, 15, 16 and 20 of the ’926 patent.”

Through an eclectic selection of statements from the Dale

decision Beckman attempts to show that the Court of Ap-

peals here erred in limiting the scope of the Dale judgment

to the precise terms thereof. The thrust of Beckman’s argu-

ment is that the judgment did not mean what it said. Beck-

man’s arguments make it clear it wants this Court to resolve

a factual dispute between the parties.

Relationship between Patent Claims

Beckman argues that each patent covers only one inven-

tion, and the claims of a patent must always stand or fall

together. This would mean, of course, that the statutory

2 Bourns, Inc. v. Dale Elec., Inc., 308 F.Supp. 501 (D. Neb. 1969)

MELO WEY RMR DUE YT TE ¥

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program outlined in 35 U.S.C. 253, 282 and 288 is a nullity.

It would mean that the scores of decisions® which held some

claims of a patent valid and some invalid have been wrong.

Section 282 of Title 35 states,

“Each claim of a patent (whether in independent or

dependent form) shall be presumed valid independently

of the validity of other claims .. .”

Beckman’s argument is simply contraiy to the Congres-

sional mandate.

Beckman’s argument that the Court of Appeals decision

reduces the effect of Blonder-Tongue* from a “knock-out

blow” to a “gentle jab” at the multiplicity of patent litiga-

tion reflects a serious misunderstanding of the underlying

premises of that decision. Blonder-Tongue rests on the

critical premise of a full and fair hearing. Absent such a

hearing Blonder-Tongue itself recognizes that estoppel will

not lie even though a claim or claims have been previously

adjudicated as invalid. Obviously patent claims not at issue

have not been provided the requisite full and fair hearing.

The Court in Blumcraft, supra, qualified its “knockout

blow” with the condition that there had been a “fair fight”.

In this case, as to the claims not at issue in the Dale case,

supra, there was no fight, let alone a fair one.

3 See, e.g., Ansul Co. v. Uniroyal, Inc., 448 F.2d 872 (2d Cir.

1971) ; Garrett Corp. v. United States, 422 F.2d 874 (Ct. Cl. 1970) ;

McCutchen vy. Singer Co., 386 F.2d 82 (5th Cir. 1968); Hensley

Equip. Co. v. Esco Corp., 375 F.2d 432 (9th Cir. 1967); Zegers v.

Zegers, Inc., 365 F.2d 156 (7th Cir. 1966) ; Ballantyne Inst. & Elec.,

Inc. v. Wagner, 345 F.2d 671 (6th Cir. 1965).

4 Blonder-Tongue Labs, Inc. v. University of Illinois Found., 402

U.S. 313 (1971).

5 Terminology taken from Blumcraft of Pittsburgh v. Kawneer,

178 USPQ 513 (5th Cir. 1973).

4

Conflict Between The Circuits

Beckman argues that the decision as to the unadjudicated

claims is in conflict with decision in the Fourth,® Seventh,’

and Tenth® Circuits, and the Central District of California.®

Each of those decisions is clearly distinguishable on the

facts. In the Technograph decisions rendered by the Fourth

and Seventh Circuits, both Courts relied on the fact that

even though there were at issue three claims not asserted

in the earlier case,!® the plaintiff had stipulated that no

new issues were being raised. Moreover, in the earlier case

Technograph asserted that that proceeding was its test case.

It was on these grounds that the Seventh Circuit distin-

guished its decision in Technograph from its holding in this

case,

In the Blonder-Tongue decision, on remand from this

Court, Judge Hoffman precisely pointed out that the Court

of Appeals for the Eighth Circuit had adjudged the entire

patent invalid (334 F.Supp. at 51).

In the Blumcraft decision the District Court likewise pre-

cisely pointed out (337 F.Supp. at 859) that in the earlier

South Carolina case

“both in the trial and appellate courts, the final judg-

ments referred to the validity and invalidity of the

6 Technograph Printed Circuits, Ltd. vy. Martin-Marietta Corp.,

474 F.2d 798 (4th Cir. 1973).

7Univ. of Illinois Foundation v. Blonder-Tongue Labs., Inc., 465

F.2d 380 (1972), affirming, 334 F.Supp. 47 (N.D. Ill. 1971) ; Tech-

nograph Printed Circuits, Ltd. vy. Methode Electronics Inc. ... F.2d

..., 179 USPQ 206 (7th Cir. 1973), affirming, 174 USPQ 297

(N.D. Ill. 1972).

8 Blumcraft of Pittsburgh v. Architectural Art. Mfg., Inc., 337

F.Supp. 853 (D. Kan. 1972), aff'd per curiam, 459 F.2d 482 (10th

Cir. 1972).

9 Technograph Printed Circuits, Ltd. v. Packard Bell Electronics

Corp., 290 F.Supp. 308 (C.D. Cal. 1968).

10 Technograph Printed Circuits, Ltd. v. Bendix Aviation Corp.,

218 F.Supp. 1 (D. Md. 1963), aff’d, 327 F.2d 497 (4th Cir. 1964).

5

whole patent .... No separability or savings clause as

to any claims is indicated by the Fourth Circuit.”

It is manifestly clear that the facts on which Blumcraft

turned materially differ from the judgment in the Dale case.

The thrust of Beckman’s petition is an attempt to expand

the doctrine of collateral estoppel to the limits of the doc-

trine of res judicata. Justice Clark in his opinion obviously

recognized the distinction and rejected the attempt.

CONCLUSION

Beckman is unable to show that any of the criteria of

Supreme Court Rule 19 are present here. For that reason

Beckman’s petition should be denied.

Respectfully submitted,

CLypE F, WILuian

Rosert L. Harmon

Hume, CLEMENT, Brinks, WILLIAN,

Ops & Cook, Lrp.

One First National Plaza

Chicago, Illinois 60670

Counsel for Respondents