Appendix — Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation

Supreme Court brief1971

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IN THE

Supreme Court of the Gunited States

Octoser Term, 1970.

No. 338

BLONDER-TONGUE LABORATORIES, INC.,

Petitioner,

vs.

UNIVERSITY OF ILLINOIS FOUNDATION, er at.,

Respondents.

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF

APPEALS FOR THE SBVENTH CIROUIT.

INDEX.

PAGE

List of Relevant Docket Entries.................... 1

EE Whe Jha Winek Ghedeenteseneandeanncnedannes 10

Defendant’s Answer and Counterclaim.............. 12

Plaintiff’s Reply to Defendant’s Counterclaim....... 25

Counterclaim Defendant’s Reply to Counterclaimant’s

Counterclaim, and Cross-Claim.................. 29

Defendant’s Reply to Cross-Claim.................. 36

Order Placing Cause on Trial Call on February 20,

oe ee

Amended Answer and Counterclaim................ 40

Counterclaim Defendant’s Reply to Amended Counter-

Glaim and Crose-Olalm. ......ccccecscsccccccccscs 46

Plaintiff’s Reply to Amended Counterclaim.......... 48

Defendant’s Reply to Counterclaim Defendant’s Cross-

SD FA ch Accakccawadabsncnmeessdounenbeeeveens 52

Notice of Appeal to Court of Appeals, 7th Circuit..... 53

Decision of Court of Appeals for the 7th Circuit, Feb.

13, 1970, as Modified ; University of Illinois Founda-

tion v. Blonder-Tongue Laboratories, Inc. v. JFD

I GIO, sv cnhccrccnsccnnccasecuvanasoss 54

Memorandum of Decision, Julius J. Hoffman, United

States District Judge; University of Illinois Founda-

tion v. Blonder-Tongue Laboratories, Inc. v. JFD

URNS CR. kein cease eccveorecesscsscncves 71

Decision of Court of Appeals for the 8th Circuit, Sept.

30, 1968; University of Illinois Foundation v. Wine-

ks eerererrrre rere TT ere rrr rr reer 93

Memorandum Opinion, June 23, 1967 (Amended July

18, 1967), Stephenson, Chief Judge; University of

Illinois Foundation v. Winegard Company......... 101

Court’s Order Holding Cause on Trial Call Until May

SE ET cbRi sadn craccsvusessentienneacaewasendes 125

Court’s Order Holding Cause on Trial Call Until May

DUET c.cakdunpeteurhacedsans sbonsausanaeonnnn 125

Court’s Order Holding Cause on Trial Call Until May

EE: KuaSwecssndddcvsnadcnsesgvaxcenanuawaees 126

Court’s Order Holding Cause on Trial Call Until May

EE Nab ovedscskensddssascduccodvesncaaenesscs 126

IE icv sca nc clon ders cen davelcaudeonine 127

iii

Court’s Order Holding Cause on Trial Call Until June

By PE See hde ern bebe eekécbcet ined sakenehvsnawe

Gh OEE Vecsducovseedsctncsauecstackeenesesevnss

Court’s Order Retaining Cause on Calendar.........

Court’s Motion Placing Cause on Call of Cases Holding

Pee EN PN ie kdb adanesuccdbeacsadsevedis

Court’s Order Placing Cause on Trial Call on Sep-

I By Ie Gach dade wedesiesacikaveuikecdnese

Order on Plaintiff’s Motion, Holding Cause on Trial

Call Until October 23, 1967... ccccccccccccccccs

Order on Defendant’s Motion, Holding Cause on Trial

Call Until December 18, 1967.............. Seaekaen

Court’s Order Holding Cause on Trial Call Until De-

SE A bo nbn k cucbn este ncdvpeshincnsnes

Court’s Order Holding Cause on Trial Call Until De-

ee I alsa ov keo bos UNG 0508 b hod Beene seshes

Defendant’s Notice of Motion..................eee0.

Affidavit of Richard S. Phillips in Support of Motion

Oy EE Gh ucCWascesabatbhaecenereesccicecee

Supplemental Affidavit of Robert H. Rines in Support

of Motion to Reschedule...............ececeeeeees

Order Denying Motion to Reschedule................

Court’s Order Holding Cause on Trial Call Until De-

NT EE ME occas ekinds adbanrcecneuthnacue

Court’s Order Denying Defendant’s Motion to Post-

Se EE Woh 4504000 0asudeabdsodcararabaseacees 142

Court’s Order Holding Cause on Trial Call on De-

EE 5 6665 6de hs katcecasdacekisekeraness 143

TRANSCRIPT OF PROCEEDINGS.

ee ee reer et ere rT eT ee TT TT eer 144

Opening Statement of Counsel..............:+eeee0 149

Witnesses for Plaintiff.

Testimony of Edward F. Harris..............+-.+++ 155

Testimony of Dr. Raymond H. DuHamel............ 259

Testimony of Paul Eugene Mayes.................. 298

Testimony of Harold D. Lawler.................++: 325

Testimony of James Colvin...........-.eeeseeeeeee 368

Witnesses for Defendant.

Testimony of Paul Eugene Mayes.................. 208

Testimony of Isaac S. Blonder..............--.0+0+: 333

Witness for Counterclaim Defendant.

Testimony of Paul Eugene Mayes................++- 375

Deposition Excerpts.

Deposition of Jerome I. Cohn..............--...05. 363

Deposition of Harry Gilbert..................--000: 366

Stipulation Regarding Admission of Testimony and

Exhibits from Other Actions Involving Isbell

RE. chs deed nnaavin oohu tAbO Re Mebieebassons 385

Excerpts from Testimony of Marjorie Johnson; Uni-

versity of Illinois Foundation v. Winegard Company 386

Stipulation of Facts; The Finney Company v. JFD

Electronics Corporation and University of Ilinois

PED Sen bndebbas Kasecnts sunevanakoedesans 393

Deposition of Edward Finkel Taken November 1, 1966 397

Date

APPENDIX.

RELEVANT DOCKET ENTRIES.

Filings—Proceedings

3/29/66

5/ 9/66

5/31/66

6/10/66

6/16/66

6/22/66

Filed complaint and 2 copies

7 * -_ * 2

On Court’s motion, cause set for report on

status on June 16, 1966—Hoffman, J.

Filed Motion to dismiss under Rule 12(b) and/

or motion for summary judgment. Defendants

Brief in support of the Motion

Filed Plaintiff’s answering brief opposing mo-

tion of defendant Blonder-Tongue Laboratories,

Inc. to dismiss (To J. Hoffman)

Filed Motion to dismiss under the provisions of

Rule 12(b) and/or Motion for Summary Judg-

ment under the provisions of Rule 56—Defend-

ants’ Reply brief in support of motion (To J.

Hoffman) |

Leave to defendants to file instanter their reply

brief in support of motion to dismiss—Hoffman,

Cause to retain its place on the calendar—Hoff-

man, J.

2 * * * -_

Filed Plaintiff University of Illinois Founda-

tion’s first set of interrogatories to defendant

Blonder-Tongue Laboratories, Inc. under Rule

7/ 5/66

8/11/66

8/25/66

9/ 1/66

9/ 7/66

9/23/66

9/22/66

10/20/66

11/ 1/66

On Courts Motion, cause placed on call of cases

holding place for trial Calendar No. 88, Hoff-

man, J.

Filed Answers to plaintiff’s interrogatories by

defendant Blonder-Tongue Laboratories, Inc.

* & *

Filed Plaintiff’s second set of interrogatories to

defendant Blonder-Tongue

Filed defendant Blonder-Tongue Laboratories,

Inc. Answer and counterclaim and Exhibit A

By stipulation order Allied Radio Corp. dis-

missed as one of the defendants herein (Draft)

Will, J.

Filed Notice of motion and Motion to join JFD

Electronics Corporation as a party counter-

claim defendant

Enter order—Motion to join JFD Electronics

Corporation as a party counterclaim defendant

granted, said party counterclaim defendant to

answer within 20 days—Will, J.

* az ™ +

Filed plaintiff’s reply to counterclaim of De-

fendant Blonder-Tongue Laboratories, Inc.

Filed Plaintiff’s third set of interrogatories to

defendant Blonder-Tongue LaboratorXs, Ine.

Filed Defendant’s substitute answers to plain-

tiff’s second set of interrogatories and answers

to plaintiff’s third set of interrogatories

Filed Counterclaim defendant’s JFD Electronics

Corporation, reply to counterclaim of counter-

claimant, Blonder-Tongue Laboratories, Inc.,

and cross-claim

* * - * *

11/18/66

1/13/67

1/16/67

1/23/67

1/24/67

1/30/67

1/31/67

2/ 3/67

Filed Reply of Blonder-Tongue Laboratories,

Inc. to cross-claim of JFD Electronics Corp.

On Court’s motion, cause will be added to the

trial call on February 20, 1967. Counsel re-

quired to be ready for trial

* o . * *

Filed Amended complaint

* * a + *

Filed Amended answer and counterclaim of de-

fendant Blonder-Tongue Laboratories, Inc.

Filed Counterclaim defendant (JFD) Notice of

prior art to be relied upon by the counterclaim

defendant at the trial of this action

Filed Counterclaim defendant’s (JFD) Supple-

mental notice of prior art to be relied upon by

the counterclaim defendant at the trial of this

action

Filed Counterclaim defendant’s (JFD Electron-

ics Corporation) reply to amended counterclaim

of counterclaimant, and cross-claim

Filed Plaintiff’s Reply to Amended Counter-

claim of defendant and counterclaimant.

Filed Counterclaim defendant ’s Second Supple-

mental notice of prior art to be relied upon by

the counterclaim defendant at the trial of this

action

Filed defendant and counterclaimant’s Notice

of motion, motion to postpone depositions, and

Affidavit in support of motion to postpone depo-

sitions (Blonder-Tongue Laboratories)

Motion of defendant and counterclaimant to

postpone taking of depositions denied—Hoff-

man, J.

2/ 3/67

2/ 7/67

2/17/67

2/20/67

3/22/67

3/29/67

3/31/67

4/17/67

4/27/67

5/ 1/67

Filed Reply of Blonder-Tongue Laboratories,

Inc. to cross-claim of JFD Electronics Corpo-

ration

Filed deposition of Isaac S. Blonder (2 volumes)

Filed Interrogatories of defendant, Blonder-

Tongue Laboratories, Inc. to plaintiff, Univer-

sity of Illinois Foundation and to the University

of Illinois under Rule 33

Cause held on trial call until May 1, 1967 at

10 A. M.—Hoffman, J.

S = . . .

On motion JFD Electronics Corp., counterclaim

defendant, order cross-claim hereby dismissed

with prejudice and without costs—Decker, J.

. @ * o -

Filed Plaintiff’s list of exhibits and witnesses

Filed Further additional supplemental notice of

prior art to be relied upon by the counterclaim

defendant at the trial of this action

Filed Additional supplemental notice of prior

art to be relied upon by the counterclaim de-

fendant at the trial of this action

Filed deposition of Blonder-Tongue Laborato-

ries, Inc. by Richard B. Helhoski, Jerome I.

Cohn, Harry Gilbert, and Robert F. Heslin (4

volumes)

a o o a

Filed Deposition of Dr. Paul E. Mayes (2 vol-

umes)

Filed Deposition of Hjalmar W. Johnson, Ron-

ald D. Grant, and James C. Colvin (3 volumes)

* * - . .

Cause held on trial call until May 16, 1967 at

10 A. M.—Hoffman, J.

4/28/67

5/16/67

5/23/67

5/25/67

5/26/67

5/29/67

5/26/67

5/29/67

6/ 5/67

6/13/67

6/16/67

6/20/67

6/30/67

7/18/67

Filed Stipulation of Facts by Blonder-Tongue

Laboratories, Inc. and JFD Electronics Corpo-

ration.

Cause held on trial call until May 23, 1967 at

10 A. M.—Hoffman, J.

Cause held on trial call until May 25, 1967 at

10 A. M.—Hoffman, J.

Cause held on trial call until May 29, 1967 at

10 A. M—Hoffman, J.

Filed notice of motion and defendant Blonder-

Tongue Laboratories, Inc., motion re reschedul-

ing for trial and affidavit of Richard S. Phillips

Cause held on trial call until June 13, 1967 at

10 a.m. Hoffman, J.

Motion of defendant and counterclaimant to

reset cause from May 29, 1967 to June 13, 1967,

entered and continued to May 29, 1967 at 10 a.m.

Hoffman, J.

Enter Order motion of defendant and counter-

claimant to reset cause from May 29, 1967 to

June 13, 1967, allowed. Hoffman, J.

Filed deposition of Jerome N. Balash

Cause held on trial call until June 16, 1967 at

10 A. M.—Hoffman, J.

Cause held on trial call until June 30, 1967 at

10 A. M.—Hoffman, J.

Filed deposition of Dr. Paul E. Mayes and Ron-

ald D. Grant (2 volumes)

Cause to retain its place on calendar. Hoffman,

On Courts motion—Cause placed on call of cases

holding place for trial Calendar No. 5—Hoff-

man, J.

8/15/67

9/11/67

10/23/67

12/18/67

12/20/67

12/26/67

12/27/67

12/26/67

12/27/67

On Court’s motion, cause will be placed on the

trial call on Tuesday, September 12, 1967, at 10

A. M. Counsel required to be ready for trial—

Hoffman, J.

Filed Notice of motion and Motion for order

postponing trial date

On motion of plaintiff Cause reset from Sep-

tember 12, 1967 and held on trial call until

October 23, 1967 at 10 A. M.—Hoffman, J.

Filed Notice of Motion, Motion, and Affidavit of

Richard S. Phillips

On motion of defendant—Cause held on trial

call until December 18, 1967 at 10 A. M.—Hoff-

man, J.

Cause held on trial call until December 20, 1967

at 10 A. M.—Hoffman, J.

Cause held on trial call until December 26, 1967

at 10 A. M.—Hoffman, J.

Filed notice of motion and defendant’s motion

re rescheduling cause and affidavit of Richard

S. Phillips

Filed supplemental affidavit in support of de-

fendant-counterclaimant’s motion (to continue,

stay or postpone trial for 30-45 days)

Motion of defendant and counterclaimant that

trial be rescheduled for a date no earlier than

February 13, 1967, denied. Hoffman, J.

Cause held on trial call until December 27, 1967

at 10 a.m. Hoffman, J.

Motion of defendant counterclaimant to post-

pone trial, denied. Hoffman, J.

Cause continued and held for trial «n December

28, 1967 at 10:a.m.—Hoffman, J.

12/28/67

12/29/67

1/ 2/68

1/ 3/68

1/ 4/68

1/ 5/68

1/ 8/68

1/ 9/68

1/10/68

1/11/68

1/12/68

Cause called for trial. Opening statements

heard. Evidence heard for plaintiff. Cause con-

tinved to December 29, 1967 at 10 A.M.—Hoff-

man, J.

Further evidence heard for plaintiff. Cause con-

tinued to January 2, 1968 at 10 A.M.—Hoffman,

Further evidence heard for plaintiff. ...

o * * . a

Filed Stipulation re testimony and exhibits.

Further evidence heard for defendant... .

* * a * o

Further rebuttal evidence heard for plaintiff.

. a -_ © *

Further rebuttal evidence heard for plaintiff.

e * * « o

Further rebuttal evidence heard for plaintiff.

* a a * ¥

Further evidence heard for defendant-counter-

plaintiff re Counterclaim.

e ° e 7 *

Further evidence heard for defendant-counter-

plaintiff on the counterclaim—

* o> e a e

Further evidence heard for defendant-counter-

plaintiff on the counterclaim.

Filed Stipulation re copies of License Agree-

ments.

Filed Stipulation re copies of correspondence

between JFD Electronics, et al.

Filed Stipulation re defendant Blonder-Tongue

Laboratories, Inc.’s Exhibit 61 and Exhibit 26.

1/12/68

1/15/68

1/16/68

6/27/68

7/11/68

7/25/68

9/ 3/68

12/11/68

12/17/69

4/10/69

2/16/70

Further evidence heard for the defendant and

counter-plaintiff.

a 2 * * +

Evidence heard for plaintiff and counterclaim

defendant.

e s o s ©

Re-counterclaim—Further evidence heard for

counterclaim-defendant J. F. D. in defense of

conaterclaim. Counterclaim-defendant J. F. D.

rests. Further evidence heard for defendant

and counter-claimant. Defendant and counter-

claimant rests. All parties rest. Cause taken

under advisement.

Filed Memorandum of Decision and Order.

* * e * *

Filed Clerk’s File Copy of Transcript of Pro-

ceedings had before the Hon. Julius J. Hoffman,

Judge on December 28 and 29, 1967: January

2, 3, 4, 5, 8, 9, 10, 11, 12, 15, and 16, 1968 by

Official Court Reporter.

Filed defendant and counterclaimant Blonder-

Tongue Laboratories, Inc., notice of appeal.

* * . e o

Filed original record on appeal.

s * * * .

Filed 10 copies of appellant’s appendix, service.

s a 2 a e

Filed 4 sets of 2 vol. of exhibit exhibits, service

(per 30(c)).

* *

* . .

Heard and taken under advisement.

Entered judgment order (see order).

Opinion by Judge Fairchild.

* = *

2/27/70

4/ 2/70

4/ 7/70

4/10/70

5/11/70

5/18/70

6/ 9/70

6/29/70

7/ 6/70

7/ 9/70

10/28/70

Filed 25 copies appellee’s petition for clarifica-

tion, reconsider and rehearing, en banc—service.

2 e * * 7

Entered order amending opinion filed 2/13/70

in part; (see order denying the suggestion for

rehearing en banc; and denying motion of JFD

Electronics Corp for clarification of order dis-

allowing co (illegible).

Filed orig. & 3 copies of defendant & counter-

claimant appellant petition for stay of mandate

—service.

Entered order granting motion of 4/7/70.

(mandate stayed 30 days).

Filed orig. & 3 copies of appellant’s motion for

stay of mandate—affidavit and service.

Entered order granting motion of 5/11/70.

(mandate stayed to 6/10/70).

Filed orig. & 3 copies petition for stay of man-

date—service.

Entered order granting motion of 6/9/70.

(stayed to 7/1/70). ;

Filed orig. & 3 copies appellant’s motion to stay

mandate—service.

Entered order granting motion of 6/29/70 only

to July 10, 1970.

Filed notice of filing petition for writ of cer-

tiorari as #338.

Filed notice of order allowing certiorari.

In tHe Untrep States Districr Court,

For the Northern District of Dlinois,

Eastern Division.

The University of linois Foundation, )

Plawtiff,

rage | Civil Action

Blonder-Tongue Laboratories, Inc. & No. 66-C-567.

Allied Radio Corporation,

Defendants. |

COMPLAINT.

1. Plaintiff, The University of Illinois Foundation, is

a non-profit corporation organized under the laws of the

State of Illinois and has its place of business at Urbana,

Dlinois.

2. Defendant, Blonder-Tongue Laboratories, Inc. is a

corporation organized under the laws of the State of New

Jersey and has its principal place of business at 9 Alling

Street, Newark, New Jersey.

3. Defendant, Allied Radio Corporation, is a corpora-

tion organized under the laws of the State of Ilinois and

has its principal place of business at 100 North Western

Avenue, Chicago, Illinois.

4. This is a suit for patent infringement, arising under

the patent laws of the United States.

5. United States Letters Patent No. 3,210,767 was duly

and legally issued to Plaintiff on October 5, 1965, as

assignee of Dwight E. Isbell. Plaintiff is the owner of said

patent and of all rights of recovery thereunder.

6. Defendants, and each of them, are infringing said

Letters Patent by making or causing to be made or sold,

without license from plaintiff, radio and television antennas

embodying the invention of said patent within this District

and elswhere in the United States and will continue to do

so unless enjoined by this Court.

Wherefore, plaintiff prays for the issuance of a judg-

ment providing that:

1. Plaintiff is the owner of United States Letters Patent

No. 3,210,767 and of all rights of recovery thereunder ;

2. Said Letters Patent No. 3,210,767 is good and valid

in law and has been infringed by defendants and each of

them ;

3. An injunction be issued enjoining defendants from

further infringement of said patent permanently and dur-

ing pendency of this suit;

4. An accounting be had to determine the damages to

which plaintiff is entitled for such infringement and that

the damages so ascertained be awarded to plaintiff, to-

gether with interest;

5. Plaintiff be granted its costs of this action and such

other and further relief as may seem proper to the Court.

Merriam, Marshall, Shapiro & Klose,

By Basil P. Mann,

30 West Monroe Street,

Chicago, Dlinois 60603,

Attorneys for Plaintiff.

Date:

Of Counsel:

Charles J. Merriam,

William A. Marshall,

Basil P. Mann,

Merriam, Marshall, Shapiro & Klose,

30 West Monroe Street,

Chicago, Illinois 60603.

In tHE Unrrep States Distatct Court.

(Title Omitted in Printing)

ANSWER AND COUNTERCLAIM.

Answer.

Now comes the defendant, Blonder-Tongue Laboratories,

Inc. (hereinafter referred to as BT), by its attorneys, and

answers the complaint herein, pursuant to this Court’s

order of August 12, 1966, as follows:

1, 2, 3,4. Paragraphs 1, 2, 3 and 4 of the complaint are

admitted.

5. Answering paragraph 5 of the complaint, defendant

denies that United States Letters Patent No. 3,210,767

was either duly or legally issued to plaintiff, as assignee

of Dwight E. Isbell, though admitting that such a patent

in fact exists; and defendant is without sufficient informa-

tion and belief to admit or deny the remaining allegations

of this paragraph and therefore leaves plaintiff to its proof.

6. Defendant denies each and every allegation of para-

graph 6 of the complaint.

Further answering, defendant states that (a) the accused

antennas do not incorporate any patent invention described

or properly claimed in the patent in suit and do not infringe

said patent, assuming, arguendo, its validity; and (b) that

said patent in suit is in fact invalid and unenforceable

against defendant for the reasons set forth in the counter-

claim herein.

Wherefore, defendant prays for the dismissal of the

complaint and for such other and further relief in the

premises as to this Court may seem just and proper.

Counterclaim.

Now comes the defendant BT, by its attorneys, and by

way of counterclaim to the complaint herein, alleges as

follows :

1. Counterclaimant Blonder-Tongue Laboratories, Inc.

(BT) is a corporation duly organized and existing under

the laws of the State of New Jersey, having a principal

place of business at 9 Alling Street, Newark, New Jersey,

where it manufactures and sells for distribution through-

out the United States, including within the Northern Dis-

trict of Illinois, antennas under its trademarks Golden Dart

and Golden Arrow.

2. The University of Illinois Foundation (Foundation)

is a non-profit corporation organized and existing under

the laws of the State of Illinois, having its place of busi-

ness at 224 Illini Union, Urbana, Illinois; and, upon infor-

mation and belief, said Foundation is wholly owned and

controlled by the University of Illinois of Urbana, Illinois,

being an alter ego of said University, which, in turn, is a

public institution supported principally by funds derived

from the State of Illinois, the United States Government

and other public sources and exempted from taxation upon

the representation that it is a non-profit educational

institution.

3. JFD Electronics Corporation (JFD), upon informa-

tion and belief, is a corporation organized under the laws

of the State of New York, having places of business and

doing business at 6330 West Hermione Street and at 6139

West Touhy Avenue, Chicago, Illinois, where, and else-

where within the Northern District of Illinois, it has en-

gaged jointly with the said Foundation, and severally, in

acts of unfair competition and other actionable causes

hereinafter set forth.

Count I—For Unfair Competition.

4. This cause of action arises by virtue of diversity of

citizenship and an amount in controversy exceeding ten

thousand dollars, exclusive of interest and costs, and under

the unfair competition and related laws of the State of

Illinois and under 28 U. S. C. 1338.

5. On information and belief, the plaintiff and counter-

claim defendant, said Foundation, after acquiring rights

under certain so-called log-periodic antenna designs, in-

eluding title to Isbell Patent No. 3,210,767, the subject mat-

~ter_of the complaint herein, entered into a commercial busi-

ness arrangement, including a license agreement, with

counterclaim defendant JFD to exploit the said antenna

designs and patent in the field of receiving antennas for

television and FM broadcast, under the terms of which the

antennas for said field would be exclusively manufactured

and sold by JFD and distributed by JFD from its place of

business in Chicago, Illinois and elsewhere, and moneys

received therefrom would be divided between JFD and the

Foundation in accordance with certain percentage figures.

6. Further in accordance with said commercial business

arrangement, on information and belief, the Foundation

undertook the primary responsibility of policing said pat-

ent and of aiding the commercial sales of the antennas of

JFD, in which, as before stated, it shared in the sales

returns, by news releases and other advertising media

using the name of said Foundation and threatening all

manufacturers in the industry (and thus counterclaimant

BT) with suit if any so-called log-periodic antennas were

made and sold by them, and by announcements and mailings

to customers of such other manufacturers, including cus-

tomers of BT, of suits which were filed and intended suits,

regardless of whether such antennas were actually covered

by said patent or any other patent of the Foundation or

JFD.

7. On information and belief, said Foundation and JFD

conspired unlawfully to restrain competition in the field of

television and F'M broadcast receiving antennas, and jointly

and severally have engaged in unlawfully restraining such

competition by at least the following acts and possibly

others, presently unknown to counterclaimant, but as to

which counterclaimant prays leave to add by amendment

to this counterclaim upon completion of discovery herein:

(a) Publication of copious advertisements in national,

technical and popular publications and elsewhere, circu-

lated throughout the United States, including the Northern

District of Illinois, using the names of both said Founda-

tion and JFD, knowingly and falsely representing the

scope of their patent coverage as embracing all antennas of

the so-called log-periodic type, and generally threatening

every antenna manufacturer (which includes counter-

claimant BT) and customers in said field with patent suit

even before the issuance of said Patent No. 3,210,767,

illegally to restrain competition in the manufacture and

sale of all log-periodic type antennas, including those

clearly outside such patent coverage.

(b) Conspiring to use and using the name and prestige

of the supposedly non-profit tax-free educational and re-

search institution, said Foundation, in falsely representing

to the public, in newspapers, sales catalogs and magazine

advertisements, within the Northern District of Mlinois

and throughout the country, that only said JF'D had a right

to make log-periodic antennas, and that only the antennas

of JFD had certain desirable performance characteristics,

thereby illegally influencing the public, through the prestige

of said Foundation, to patronize only the defendant JFD.

wide advertising campaign and otherwise misusing the

name, influence, reputation and prestige of said Founda-

tion and the tax-exempt University of Illinois in a crass

commercial activity dedicated to the restraint of competi-

tion by such false and misleading statements above set

forth, and by falsely libeling and disparaging competitors’

businesses and antenna products, including those of coun-

terclaim BT, by maliciously misleading statements that

none of such competitors could use the log-periodic prin-

ciple or get the allegedly desirable performance attainable

therewith.

(d) Committing the acts aforesaid to create and per-

petuate a reluctance in the trade and among prospective

customers to purchase antennas from counterclaimant, and

to create an unjustified concern that counterclaimant would

not be able to continue to supply their antennas and that

purchasers would subject themselves to the risk of in-

curring expense and inconvenience and of impairment of

business reputation by being sued for patent infringement

by said Foundation.

(e) Conspiring to sue and suing counterclaimant BT

(and other manufacturers) under said Patent No. 3,210,767,

in the United States District Court for the Northern Dis-

trict of Illinois, Eastern Division, in a suit wherein the

complaint on its face shows that said Foundation knew it

had no jurisdiction over counterclaimant BT, but with the

clear purpose of providing an excuse for each of said

Foundation and JFD, within a few days after the filing of

said complaint, to issue separate and independent news

releases announcing suit against the counterclaimant BT,

by name, and thereupon circularizing copies of said news

releases to many customers of counterclaimant BT, both

within the Northern District of Illinois and throughout the

country, illegally to mislead said customers into thinking

that counterclaimant BT had been properly sued and il-

legally to induce said customers to cease buying from

counterclaimant and to purchase only from JFD.

(f) Conspiring to perform and performing the acts set

forth in (a) through (e) above, while, on information and

belief, knowing that BT, even before the issuance of said

Patent No. 3,210,767, had been marketing its antennas

marked ‘‘patent pending’’ and that such antennas were not

infringements of said patent No. 3,210,767, wherefore

neither the Foundation nor JFD even bothered, prior to

instituting suit, to send any formal notice of infringement

to counterclaimant or formally to discuss the same with it.

(g) Conspiring further to mislead the public by de-

liberately changing the electrical and mechanical design

of many of the JFD antennas over to the design of BT’s

own antennas, and thereafter falsely representing to the

public that these changed designs were actually those of

the Foundation and JFD and were covered by the said

Foundation patent, thus libeling the rights and title of BT

in and to its own antennas.

(h) Representing and publishing in advertising, sales

literature and instructional material accompanying the

JFD antennas and under the names of both said Founda-

tion and JFD, that said antennas operate according to a

patented log-periodic formula; whereas in actual fact said

antennas were not then patented, were not log-periodic,

did not operate according to the so-called log-periodic

formula, and such formula as such was not patented—all

facts then well-known to said Foundation and JFD but

which, on information and belief, they deliberately chose to

disregard in their intent to mislead and deceive the public,

not only in unfair competition with counterclaimant, but

in violation of the false patent marking provisions of 35

U. 8S. C. 292, as well.

(i) Damaging the business of counterclaimant by loss

of sales and good will among. its customers and potential

customers and by the resulting diminution of the position

and value of counterclaimant BT’s own patented antennas;

(j) And, as part of the campaign unfairly to compete

with counterclaimant and to try to restrain it from becom-

ing established as a serious antenna competitor of JFD,

deliberately inducing the manager and organizer of BT’s

complete antenna business recently to leave the employ of

BT and to enter the employ of JFD, knowing that such

manager was the sole and key executive in BT’s antenna

business and that his loss would greatly impair BT’s ability

to maintain continuity in the development of its antenna

business.

Count IJ—Anti-Trust.

8. This count arises under the anti-trust laws of the

United States, including the Sherman and Clayton Acts,

as amended.

9. Counterclaimant reasserts the allegations of para-

graphs 1-7 of this counterclaim, the acts complained of

therein constituting clear violations of the anti-trust laws

of the United States, as weil, particularly in view of the

fact that said JFD is one of the largest manufacturers of

antennas for said field in the United States.

Count I1I—Patent Infringement.

10. This count arises under the patent laws of the

United States.

11. Counterclaimant reasserts the allegations of para-

graphs 1-9 of this counterclaim.

12. Counterclaimant BT is the owner of United States

Letters Patent No. 3,259,904 ‘‘Antenna Having Combined

Support and Lead-In’’ which duly and legally issued on

July 5, 1966, and a copy of which is annexed hereto as

Exhibit A.

13. The patent, Exhibit A, covers the Golden Dart and

Golden Arrow antennas manufactured by BT and which

said Foundation charged infringe the Isbell Patent No.

3,210,767, the subject ‘matter of the complaint in this liti-

14. As set forth in paragraph 7(g) hereof, JFD and

the Foundation changed the design of certain of their an-

tennas to copy the invention covered by the BT patent,

Exhibit A, including the JFD models LPB-VU18, 15, 12, 9

and 6, LPV-TV 19, 16, 13 and 10, and possibly others

presently unknown to counterclaimant, and, since the issu-

ance of counterclaimant’s patent, and within six years

of the filing of this count, have been inducing the public,

within the Northern District of Illinois and elsewhere in

the United States, to purchase said certain antennas in-

cluding said Models manufactured by JFD in clear in-

fringement of the rights covered by said BT patent, Ex-

hibit A; and JFD and the Foundation, pursuant to their

commercial business arrangement set forth in paragraphs

5-7 hereof, are offering for sale, stocking, distributing and

selling, within the Northern District of Dlinois and else-

where in the United States, antennas including said Models

above, that embody the invention of and infringe said BT

patent, Exhibit A, and will continue so to do unless en-

joined by this Court.

Count IV—Declaratory Judgment for Patent Invalidity

and/or Non-Infringement of Patent No. 3,210,767.

15. Counterclaimant reasserts the allegations of para-

graphs 1-14 of this counterclaim.

16. From the complaint herein, it is evident that a

justiciable controversy exists between the parties under

the patent laws of the United States, subject to the Declar-

atory Judgment Act.

17. The BT antennas charged in the complaint as in-

fringements of the Isbell Patent No. 3,210,767, do not use

the invention purported to be covered by the claims of said

a RR ee

patent, but, to the contrary, are designed in accordance

with BT’s own patent, Exhibit A, and do not infringe the

Isbell Patent No. 3,210,767.

18. Isbell Patent No. 3,210,767 is invalid and void for

double-patenting over the Foundation’s earlier Patent No.

3,108,280, issued October 22, 1963, and possibly other

patents, and since Isbell is not the first inventor of the

subject matter purported to be covered thereby, the same

having previously been invented by others and having been

published and/or placed on public sale in this country

more than one year prior to the application for said Isbell

patent by the following, and possibly others, whom counter-

claimant prays leave to add by amendment to this count,

after discovery proceedings:

U. S. Patent No. 2,429,629, issued October 28, 1947 to

A. G. Kandoian

2,433,804, issued Dec. 30, 1947 to I.

Wolff

2,375,580, issued May 18, 1945 to H.

O. Peterson

2,192,532, issued March 5, 1940 to

M. Katzin

2,149,726, issued March 7, 1939 to

P. S. Carter.

19. Isbell Patent No. 3,210,767 is unenforceable against

counterclaimant in view of the inequitable conduct of the

Foundation above set forth.

Wherefore, counterclaimant prays for preliminary and

permanent injunctions restraining the acts of unfair com-

petition, anti-trust violation and patent infringement com-

plained of herein, and for a declaratory judgment that

counterclaimant BT’s antennas do not infringe Isbell Pat-

ent No. 3,210,767 and/or that said patent is invalid, void

and unenforceable, and, in view of the wanton character

of the illegal conduct of the Foundation and JFD, triple

damages and attorneys fees, as provided for by statute,

together with such other and further relief as may seem

proper to the Court.

Hofgren, Wegner, Allen, Stellman

& McCord,

By John Rex Allen,

Attorneys for Defendant and

Counterclaimant.

Rines and Rines,

Robert H. Rines,

David Rines,

10 Post Office Square,

Boston 9, Massachusetts,

Of Counsel.

Receipt of two copies of the above Answer and Counter-

claim acknowledged this Ist day of September, 1966.

W. A. Marshall,

Attorney for Plaintiff and

Counterclavmant Defendant.

Exhibit A

July 5, 1966 l. S. BLONDER ETAL 3,259,904

ANTENNA HAVING COMBINED SUPPORT AND LEAD-IN

Filed Nov. 21, 1963

Se FIG. 2

INVENTORS

ISAAC S. BLONDER

ABRAHAM SCHENFELD

ie Fe - tory A ¢e 7 femme Off 3,259,904

Jace eorel Sta eS P atent ce Patented July 5, 1966

1 2

3,259,904 a kat pom aga gl rang te ne

: tions per: structure and se

ANTENNA HAVING COENED SUETORE plurals of ho horizontal dipole elements 5, 7,9... 11

New Jersey

iled Nov. 22, 1963, tee > To

6 Crn.:2% (Ch. 343—

The present invention relates to rr antennas and,

more specifically, to antennas adapted for receiving very

high frequencies, such a$ the ultra-high-frequency tele-

vision band.

Numerous types of antennas have been evolved for

broad-band directive radio and television reception in-

cluding driven arrays, Yagi-type arrays, log periodic linear

and V-type antennas, belical antennas and other config-

urations. The problems of mounting such antennas upon,

masts for outdoor operation or upon portable structures -

adapted for directional adjustment in connection with in-

door reception have, however, long plagued the art; the

mounting and adjusting structures introducing “ghosts”

and other deleterious electrical field-pattern aberrations

over the banc. It is to the improvement of such mounting

structures and the minimizing of electrical interfering ef-

fects over a wide band of frequencies, including stabilizing

of outdoor performance and providing for ready adjusta-

bility in indoor performance, that the present invention is

primarily directed.

A further object of the invention is to provide a new

and improved antenna particularly adapted for ultra-bigh-

frequency tclevision reception.

Still another object is to provide a novel antenna of

improved performance for more general use, also.

Other objects wiil be made more evident hereinafter

and will be particularly pointed out in the appended

claims. In summary, however, the invention contemplates

a pair of rigid conductors held spaced a predetermined

vertical distance apart in a vertical plane, first and second

piuralities of horizontal dipole elements lying in corre-

sponding first and second vertically spaced horizontal

planes containing the respective conductors, the dipole

elements extending from opposite sides of each conductor

at successive points therealong with dipole elements con-

nected to one conductor extending in opposite horizontal

directions to the corresponding dipole elements of the

other corductor, the length of the dipole elements suc-

cessively increasing from one end of the conductors to-

wards the other end thereof, means for feeding the energy’

received by the antenna at the said one end of the con-

ductors, and means for mounting the antenna comprising

a further pair of rigid, preferably diverging, conductive

extensions of the said conductors mechanically secured

in rigid spaced-apart relation at the end thereof. Further

preferrec details are hereinafter set forth.

The invention wili now be described in connection with

the accompanying drawing, FIG. 1 of which is an iso-

metric view of an outdoor preferred embodiment thereof;

and

FIG. 2 is a similar view of a modified indoor version.

Referring to FIG. 1, the antenna comprises a pair of

rigid conductors 1, 1° held spaced apart a predetermined

vertical distance in a vertical plane by forward and rear-

ward insulating clamps 2 and 4. While the terms “verti-

cal” and “horizontal” as herein employed describe the pre-

ferred orientation for ultra-high-frequency television re-

cepiion, they are intended more generically to be illustra-

tive of relative orientations without being confined to ac-

tual direction. Similarly, though the invention is de-

cribed in connection with radio-wave reception, the an-

tenna may also be used for transmission, if desired, as is

weli known.

and 5’, eo ae - 11’ are provided, lying in correspond-

horizontal directions to the pole

of the other conductor (such as 5 to the right 5’ to the left;

7 to the right, 7’ to the left; and so on). The length of

the dipole elements preferably successively increases from

one end (5, 5’ being shortest) towards the other end (11,

11° being longest), as is well known, to provide direc-

tivity. A parallel-wire transmission line TL is connected

at looped terminal portions 1” and 1” beyond the clamp

2 that secures the connecting portions 1” and 1” in

spaced-apart relation, extending outside or to the left of

the smallest dipole elements 5, 5’. The line TL may be

supported below the antenna by depending guides 2’ and

4’ in the respective clamps 2 and 4, the latter being shown

positioned near the largest dipole elements 11, 11’.

The antenna of FIG. 1 is mounted upon a mast M

through the use of pairs of horizontally spaced conductor-

loop extensions 10 and 10’, shown extending to the right

beyond the longest dipole elements 11, 11’. The exten-

sions 10, 10’, respectively, terminate in upwardly and

downwardly extending vertical loops 12 and 12’ that may

be transversely curved to fit the mast M, as shown, and

are securely mechanically strapped at 14 and 14’ to the

mast to hold the system 1-1’ in rigid spaced-apart relation

at the mast end. Further to aid in mechanical stability,

the extension 10’, while in part initially extending in the

lower horizontal plane I’, diverges downwardly at 10°.

Fortuitously, this mechanical stability-providing diverging

construction has been found minimally to affect the elec-

trical field pattern, particularly if the length of the exten-

sion between the longest elements 11, 11’ and the mast M

is made comparable to the separation along conductors

1 and 1’ of the last dipole elements 11 from the next-to-the-

last element, to its left in FIG. 1. Minimal field abbera-

tions and “ghost” reflections over the complete ultra-

high-frequency band, for example, has been thus attained

with the above construction, together with satisfactory

broad-band impedance matching, provided further that

the vertical separation distance of the rigid conductors

1, 1’ is kept less than the average distance between suc-

cessive dipole elements (preferably the order of an inch

for UHF band operation), and which, in turn, is kept

much less than the wavelengths involved, as is well known.

At the UHF channel 47 frequency, for example (671

megacycles), a 20 decibel front-to-back ratio has been

obtained with this construction, providing about a 36-

degree half-power horizontal beam width and no detect-

able forward secondary lobes.

This same general type of construction has also been

found admirably suited for indoor direction adjustable

antennas, as shown in FIG. 2. In this embodiment, how-

ever, the small-dipole end of the antenna is used not only

for the connection to the transmission line, but also for

the support-providing extensions. These extensions are

illustrated as rigid conductors 20 and 20’ depending at

preferably an acute angle below the antenna at the in-

sulating clamp 2 and slightly diverging for mechanical

and impedance-matching purposes, being clamped at their

ee ee ere The

transmission line TL is thus connected to the conductors

1 and 1’ by these combined extension-supporting and

transmission-line feed members 20, 20’. The clamp 6 is

pivoted at 6’ to a bracket carried by a base 22 so that the

racmbers 1-1, 20-20’ may be adjusted as a unit for both

clectrical impedance-matching purposes and appropriate

pivoting action for reception-direction adjustment, the

Icngth of the preferably diverging extension lines 20, 20°

is made substantially equal to the length of the rigid an-

icnna-supporting conductors 1, 1’.

If VHF reception is also to be provided, it has becn

found that minimal interference is caused by the antenna

of the present invention if V-type VHF dipoles 30 are

mounted on the base forward of the pivoted clamp 6 and

with a sufficient included angle in the V to contain the

array of the invention.

Further modifications will occur to those skilled in the

ar. and all such are considered to fall within the spirit and

scope of the invention as defined in the appended claims.

What is claimed is:

1. An antenna for ultra-high-frequency operation and

th > like, having, in combination, a pair of rigid conductors

heid spaced a predetermined vertical distance apart in a

vertical plane, first and second pluralities of horizontal

dipole clements lying in corresponding first and second

vertically spaced horizontal planes containing the respec-

tive conductors, the dipole elements extending from op-

posite sides of cach conductor at successive points there-

aiong with dipole elements connected to one conductor 25

extending in opposite horizontal directions to the corre-

sponding dipole elements of the other conductor, the

length of the dipole elements successively increasing from

one end of the conductors towards the other end thereof,

means for connecting a parallel-wire transmission line to 30

ihe said one end of the conductors and means for mount-

ing the antenna comprising a further pair of rigid diverg-

ing conductive extensions of said conductors mechanical-

ly secured in rigid spaced-apart relation at an end thereof,

the said diverging conductive extensions being provided

ut the said other end of the pair of rigid conductors and

cach comprising a pair of horizontally spaced conductors

terminally provided with a vertical loop, and the said me-

chanical securing means comprising mast-strapping means

for strapping the said vertical loops, and the distance of 40

the said mast-strapping loops from the said other end

being comparable to the cistance between the Jongest and

next-to-longest pairs of dipole elements of the antenna.

2. An antenna for ultra-high-frequency operation and

the like, having, in combination, a pair of rigid conductors

held spaced a predetermined vertical distance apart in a

vertical plane, first and second pluralities of horizontal

dipole elements lying in corresponding first and second

vertically spcced horizontal planes containing the respec-

tive conductors, the dipole elements extending from op-

posite sides of each conductor at successive points there-

along with dipole elements connected to one conductor

extending in opposite horizontal directions to the corre-

sponding dipole elements of the other conductor, the

length of the dipole elements successively increasing from

one end of the conductors towards the other end thereof,

means for connecting a parallel-wire transmission line to

the said one end of the conductors and means for mount-

ing the antenna comprising a further pair of rigid diverg-

3,259,904

’ jing conductive exicnsions of said conductors mechanical-

‘

ly. secured in rigid spaced-apart relation at an end thereof,

the transmission-line connecting means and the diverging

conductive extensions being combined and extending

downward from the said one end to include an acute

angle betwecn the dipole carrying conductors and their

extensions.

3. An antcnna as claimed in claim 2 and in which the

conductive extensions are clamped at their free ends

against relative movement with the clamp being pivotally

mounted upon a base to permit adjustment, as a unit, of

the dipole-carrying conductors and their extensions.

4. An antenna as claimed in claim 3 and in which a

pair of V-type dipole elements for diffcrent frequency re-

ception, are mounted on the said base forward of the

pivotal clamp, with the said horizontal dipole elements

contained within the V.

5. An antenna for operation over a predetermined fre-

quency band, having, in combination, a pair of rigid longi-

tudinal conductors held spaced a predetermined vertical

distance apart in a vertical plane, first and second plu-

: ralities of dipole elements lying in corresponding first and

second vertically spaced horizontal planes containing the

respective conductors, the dipole elements extending from

opposite sides of and transversely at an angle to each con-

ductor at successive points therealong with dipoie ele-

ments connected to one conductor extending in opposite

direction to the corresponding dipole elements of the other

conductor, the length of the dipole elements successively

increasing from one end of the conductors towards the

other end thereof, means for connecting a parallel-wire

transmission line to the said one end of the conductors,

rigid insulating means securing the said connecting means

mechanically in spaced-apart relation and connected with

means for supporting the transmission line near the said

one end, and means for mounting the antenna at a region

of the said conductors remote from the said one end,

further rigid insulating means being provided for securing

the said longitudinal conductors mechanically in rigid

spaced-apart relation near the said region, the said verti-

cal distance being less than the distances between the said

successive points and less than the wavelengths of the

said band.

6. An antenna as claimed in claim 2 and in which the

lengths of the said conductors and of their extensions

are substantially equal.

References Cited by the Examiner

UNITED STATES PATENTS

3,086,206 4/1963 Greenberg -......... 343—815

3,108,280 10/1963 Mayes et al. _...... 343—792.5

3,134,979 5/1964 pouidbtaatancsiiaiiientatin 343—792.5

3,150,376 9/1964 Carrel et al. _.....- 343—792.5

3,210,767 10/1965 a iihasdhbiicitdaueaisielica 343—792.5

3,212,094 10/1965 Berry -........-.. 343—792.5

HERMAN KARL SAALBACH, Primary Examiner.

C. BARAFF, E. LIEBERMAN, Assistant Examiners.

In toe Unrrep States Distaict Cover.

(Title Omitted in Printing.)

PLAINTIFF’S REPLY TO COUNTERCLAIM OF DE-

FENDANT BLONDER-TONGUE LABORATORIES,

INC.

1, Summary of Counterclaim Paragraph 1. Counter-

claimant Blonder-Tongue Laboratories, Inc. (BT) is a cor-

poration of the State of New Jersey, having a principal

place of business in Newark, New Jersey.

Plaintiff admits the allegations of paragraph 1.

2. Summary of Counterclaim Paragraph 2. The Uni-

versity of Illinois Foundation (Foundation) and the Uni-

versity of Illinois are non-profit corporations of the State

of Illinois, the Foundation being owned and controlled by

the University.

Plaintiff admits that both the University of Illinois

Foundation and the University of Illinois are non-profit

corporations organized and existing under the laws of the

State of Illinois and that each has a place of business in

Urbana, Illinois. Plaintiff denies that it is owned or con-

trolled by the University of Illinois or that it is an alter

ego of said University.

3. Summary of Counterclaim Paragraph 3. JFD Elec-

tronics Corporation (JFD) is a corporation of the State

of New York and has engaged with the Foundation in acts

of unfair competition.

Plaintiff denies that it has engaged in any acts of unfair

competition or in any of the other purportedly actionable

activities set forth in the counterclaim, either with JFD or

with anyone else. As to the other allegations of the pra-

graph, plaintiff is without sufficient knowledge or informa-

tion with which to form a belief as to the truth thereof.

Count I—For Unfair Competition.

4. Summary of Counterclaim Paragraph 4. Statement

of jurisdiction.

The allegations of paragraph 4 are admitted, except that

plaintiff is without sufficient knowledge or information to

form a belief as to whether the amount in controversy

under this count exceeds ten thousand dollars.

5. Summary of Counterclaim Paragraph 5. The Foun-

dation has exclusively licensed Isbell Patent No. 3,210,767

to JFD in certain fields.

Plaintiff admits that it has exclusively licensed JFD

under Isbell Patent No. 3,210,767 in the field of receiving

antennas for television and F'M broadcasting for a royalty

based on a percentage of the sales of antennas covered by

the patent which are manufactured and sold by JFD, The

other allegations of the paragraph are denied.

6. Summary of Counterclaim Paragraph 6. The Foun-

dation has the primary responsibility of policing the patent

and aiding the commercial sale of antennas by JFD.

Plaintiff admits that, under the terms of its contract with

JFD, it has the primary right to police Patent No. 3,210,767

against infringement, but denies that it has the primary

responsibility to do so. The other allegations of the para-

graph are denied.

7. Summary of Counterclaim Paragraph 7. The Foun-

dation and JF'D have conspired to restrain competition.

The allegations of this paragraph, including subpara-

graphs (a) through (j) are denied.

Count Il—Anti-Trust.

8. Counterclaim Paragraph 8. This count arises under

the anti-trust laws of the United States, including the Sher-

man and Clayton Acts, as amended.

Plaintiff is without sufficient knowledge or information

to form a belief as to the truth of the allegation of this

paragraph, particularly in view of the failure of the coun-

terclaim to set forth the particular section(s) of the anti-

trust law or laws on which BT is relying.

9. Summary of Counterclaim Paragraph 9. Reallega-

tion of counterclaim paragraphs 1-7.

Plaintiff reasserts its answers to paragraphs 1-7 of the

counterclaim. Plaintiff is without sufficient knowledge or

information to form a belief as to whether JFD is one of

the largest antenna manufacturers in the United States.

Plaintiff denies the other allegations of the paragraph.

Count IlI—Patent Infringement.

10. Counterclaim Paragraph 10. This count arises under

the patent laws of the United States.

The allegation of this paragraph is admitted.

11. Counterclaim Paragraph 11. Counterclaimant re-

asserts the allegations of paragraphs 1-9 of this counter-

claim.

Plaintiff reasserts its answers to paragraphs 1-9,

12. Summary of Cognterclaim Paragraph 12. BT is

the owner of Patent No. 3,259,904, which was legally issued.

Plaintiff admits that Patent No. 3,259,904 was issued on

July 5, 1966, but denies that it was legally issued. Plain-

tiff is without sufficient knowledge or information to form

a belief as to whether BT is now the owner of this patent.

13. Summary of Counterclaim Paragraph 13. Patent

No. 3,259,904 covers antennas manufactured by BT.

Plaintiff admits that it charges that the Golden Dart and

Golden Arrow antennas manufactured by BT infringe

Isbell Patent No. 3,210,767, but it is without sufficient

knowledge or information to form a belief as to whether

these antennas are covered by Patent No. 3,259,904.

14. Summary of Counterclaim Paragraph 14. Plaintiff

infringes Patent No. 3,259,904.

The allegations of this paragraph are denied.

Count IV—Declaratory Judgment.

15. Counterclaim Paragraph 15. Counterclaimant re-

asserts the allegations of paragraphs 1-14 of this counter-

claim.

Plaintiff reasserts its answers to paragraphs 1-14.

16. Summary of Counterclaim Paragraph 16. A justi-

ciable controversy exists between the parties.

The allegations of this paragraph are admitted.

17. Summary of Counterclaim Paragraph 17. The BT

antennas, charged by plaintiff to infringe, are not covered

by the claims of Isbell Patent No. 3,210,767.

Plaintiff is without sufficient knowledge or information

to form a belief as to whether the BT antennas charged as

infringements of Isbell Patent 3,210,767 are covered by

Patent No. 3,259,904. The other allegations of the para-

graph are denied.

18. Summary of Counterclaim Paragraph 18. Isbell

Patent No. 3,210,767 is invalid and void.

The allegations of this paragraph are denied.

19. Summary of Counterclaim Paragraph 19. Isbell

Patent No. 3,210,767 is unenforceable against BT.

The allegation of this paragraph is denied.

Wherefore, plaintiff prays that the counterclaim be dis-

missed in its entirety with costs to plaintiff.

Merriam, Marshall, Shapiro & Klose,

By: Basil P. Mann,

A member of the Firm,

Attorneys for Plaintiff,

80 West Monroe Street,

Chicago, Illinois 60603,

Charles J. Merriam, Area Code 312—346-5750.

William A. Marshall,

Basil P. Mann,

Merriam, Marshall, Shapiro & Klose,

30 West Monroe Street,

Chicago, Illinois 60603,

Area Code 312—346-5750,

Of Counsel.

if ee ui ee,

fA DS Lt AOA pel nae Ssh 6

In tae Unrrep Srares Distaicr Court.

(Title Omitted in Printing.)

COUNTERCLAIM DEFENDANT'S, JFD ELECTRON-

ICS CORPORATION, REPLY TO COUNTERCLAIM

OF COUNTERCLAIMANT, BLONDER-TONGUE

LABORATORIES, INC., AND CROSS-CLAIM.

Counterclaim defendant, JFD Electronics Corporation

(JFD), replies to the Counterclaim herein as follows:

Resume, Paragraph 1: Identity and principal place of

business of counterclaimant, Blonder-Tongue Laboratories,

Inc. (BT).

Counterclaim defendant admits the allegations of para-

graph 1.

Resume, Paragraph 2: The University of Illinois Foun-

dation (Foundation) and the University of Illinois’ iden-

tity ownership and control.

Upon information and belief, counterclaim defendant

admits that the Foundation and University of Illinois are

non-profit corporations of the State of Illinois and that

each has a place of business in Urbana, Illinois. As to the

other allegations, counterclaim defendant is without suf-

ficient knowledge or information with which to form a be-

lief as to the truth thereof.

Resume, Paragraph 3: Identity of JFD Electronics

Corporation (JF'D) and acts of unfair competition engaged

by JFD with the Foundation.

Counterclaim defendant denies all of the allegations of

paragraph 3, JFD further states that JFD Electronics

Corporation, prior to becoming a party to this lawsuit, was

dissolved and is now JFD Electronics Company, a Division

of Stratford Retreat House, a religious corporation of the

State of New York. JFD Electronics Company, the Divi-

sion, has a place for doing business within this judicial

district.

Count I—For Unfair Competition.

Resume, Paragraph 4: Statement of jurisdiction.

Counterclaim defendant is without sufficient knowledge

or information to form a belief as to whether the amount

in controversy exceeds Ten Thousand Dollars ($10,000.00),

and admits the remaining allegations of paragraph 4.

Resume, Paragraph 5: The Foundation has exclusively

licensed JFD under Isbell Patent No. 3,210,767 in certain

fields.

Counterclaim defendant admits that it is an exclusive

licensee under said Isbell patent in the field of receiving

antennas for television and FM broadcasting on a royalty

basis based on a percentage of sales of antennas covered

by the patent. All of the other allegations are denied.

Resume, Paragraph 6: The Foundation has the primary

responsibility of policing the patent and aiding the com-

mercial sales of antennas by JFD.

Counterclaim defendant admits that under the terms of

the license agreement with the Foundation, the Foundation

has the initial responsibility with respect to policing of

Patent No. 3,210,767 against infringement and denies all

of the other allegations.

Resume, Paragraph 7: The Foundation and J FD have

conspired to restrain competition.

The allegations of this paragraph, including subpara-

graphs (a) through (j) are denied.

Count IJ—Anti-Trust.

Resume, Paragraph 8: This count arises under the anti-

trust laws of the United States, including the Sherman and

Clayton Acts, as amended.

Counterclaim defendant is without sufficient knowledge

or information to form a belief as to the truth of the

allegations of this paragraph. The particular section or

sections of the anti-trust laws charged to have been vio-

lated are not identified.

Resume, Paragraph 9: The reallegation of paragraphs

1-7 of Count I of the Counterclaim.

Counterclaim defendant denies the allegations of para-

graph 9. Counterclaim defendant is without sufficient

knowledge or information to form a belief as to whether

it is one of the largest manufacturers of antennas as al-

leged.

By way of separate and alternative defense to Count II,

counterclaim defendant states:

1, Count IT fails to state a cause of action.

2. Counterclaimant is without standing as a proper

party to maintain the action purported to be set forth in

Count II of the Counterclaim.

Count III—Patent Infringement.

Resume, Paragraph 10: This count arises under the

patent laws of the United States.

Paragraph 10 is admitted.

Resume, Paragraph 11: Counterclaimant reasserts the

allegations of paragraphs 1-9 of the Counterclaim.

Counterclaim defendant reasserts its replies to para-

graphs 1-9,

Resume, Paragraph 12: BT is the owner of Patent No.

8,259,904, which was legally issued.

Counterclaim defendant admits the issuance of said

patent but denies that it was legally issued. Counterclaim

defendant is without sufficient knowledge or information to

form a belief as to the alleged ownership of said patent.

Resume, Paragraph 13: Patent No. 3,259,904 covers an-

tennas manufactured by BT.

Counterclaim defendant admits that the Foundation

charges that the Golden Dart and Golden Arrow antennas

infringe Patent 3,210,767, but is without sufficient knowl-

edge or information to form a belief as to whether these

antennas are covered by Patent No. 3,259,904.

Resume, Paragraph 14: Plaintiff and counterclaim de-

fendant infringe Patent 3,259,904.

The allegations of paragraph 14 are denied.

Further answering the Counterclaim and for its further

and additional defenses, counterclaim defendant states:

A. United States Patent No. 3,259,904 is invalid because

the differences between the subject matter patented and the

prior art are such that the subject matter as a whole would

have been obvious at the time the alleged invention was

made to a person having ordinary skill in the art to which

said subject matter pertains.

B. United States Patent No. 3,259,904 is invalid because

the subject matter thereof was known or used or invented

by others in this country, or patented or described in a

printed publication in this or a foreign country before the

alleged invention thereof, or patented or described in a

printed publication in this or a foreign country or in public

use or on sale in this country, more than one year prior

to the filing date of the original application on which said

patent issued.

C. United States Patent No. 3,259,904 is invalid because

the subject matter therein is clearly disclosed in and lacks

any element of invention over the prior art considered

by the Patent Office during the prosecution of the appli-

cation on which the patent issued.

D. United States Patent No. 3,259,904 is invalid because

the alleged invention involves no more than the mere exer-

cise of ordinary skill in the art in view of the state of the

art at the time of and long prior to the alleged invention

thereof, or more than one year prior to the filing of the

original application on which the patent issued, all of which

prior art counterclaim defendant reserves the right to spec-

ify in accordance with the provisions of Title 35, United

States Code, Section 282, for the purpose of relying upon

same at the time of trial of this action.

E. United States Patent No. 3,295,904 is invalid in that

the specification does not describe the alleged invention or

the manner of making and using it in such full, clear, con-

cise and exact terms as to enable any person skilled in the

art or science to which the alleged invention pertains, or

with which it is most nearly connected, to make and use

the same.

F. United States Patent No. 3,295,904 is invalid because

there is no claim of the patent which is generic to species

of the alleged invention as illustrated in Figures 1 and 2

and described in the specification of said patent.

G. United States Patent No. 3,295,904 if valid at all,

is limited by the proceedings in the Patent Office; and in

view of the history of the prosecution subsequent to which

said patent issued, the claims of said patent as finally is-

sued cannot be interpreted to read upon or include a prod-

uct, device, or article, or combination thereof, made, used,

sold or offered for sale by counterclaim defendant.

G. United States Patent No. 3,295,904, if valid, is so

limited by the prior art that the claims of said patent as

finally issued cannot be interpreted to read upon or include

a product made, used, sold or offered for sale by counter-

claim defendant.

Count I[V—Declaratory Judgment.

Counterclaim defendant is without sufficient knowledge

or information to form a belief as to the truth of the allega-

tions of paragraphs 15 through 19 of the Counterclaim.

Wherefore, counterclaim defendant prays that the

Counterclaim be dismissed with costs awarded to counter-

claim defendant and for such other and further relief as

the court may deem just and proper.

Cross-Claim.

Now comes the counterclaim defendant, JFD Electronics

Corporation, by its attorneys, and by way of cross-claim

to the Counterclaim herein alleges as follows:

1. This action arises under the patent laws of the

United States.

2. Cross-claimant is JFD Electronics Company, a Divi-

sion of Stratford Retreat House, a religious corporation of

the State of New York, and with a place for doing business

within this judicial district.

3. Upon information and belief, Blonder-Tongue Lab-

oratories, Inc. (BT) is a New Jersey corporation having

its principal place of business at 9 Alling Street, Newark,

New Jersey.

4. BT has violated the provisions of Title 35, United

States Code, Section 292, by marking upon and using in ad-

vertising in connection with its Golden Dart antenna the

Patent No. 3,016,510 importing that the same is patented

for the purpose of deceiving the public and well knowing

that certain Golden Dart antenna was not in any part

thereof covered by said Patent No. 3,016,510.

Wherefore, counterclaim defendant prays for judgment

holding that:

(a) Blonder-Tongue Laboratories, Inc. is guilty of vio-

lating Title 35, United States Code, Section 292.

(b) Blonder-Tongue Laboratories, Inc. be preliminarily

and permanently enjoined from the continued false use of

Patent No. 3,016,510 and references to patents in violation

of Title 35, United States Code, Section 292(b).

3. Blonder-Tongue Laboratories, Inc. be fined Five

Hundred Dollars ($500) for each instance of its false patent

marking in violation of Title 35, United States Code, Sec-

tion 292(b), and that cross-claimant be awarded one-half

(4) of the fine imposed upon said defendant by this Court

for such false patent markings, as also provided by Title 35,

United States Code, Section 292(b).

Silverman & Cass,

By Myron C. Cass,

A Member of the Firms,

105 West Adams Street,

Chicago, Illinois 60603,

726-6006,

Attorneys for Counterclaim

Defendant.

Of Counsel:

Ostrolenk, Faber, Gerb & Soffen,

Ten East Fortieth Street,

New York, New York, 10016.

In THE Unrrep States Distaicr Court.

(Title Omitted in Printing.)

REPLY OF BLONDER-TONGUE LABORATORIES,

INC. TO CROSS-CLAIM OF JFD ELECTRONICS

CORPORATION.

Now comes the defendant, Blonder-Tongue Laboratories,

Inc. (B-T), by its attorneys, and answers the cross-claim

of JFD Electronics Corporation as follows:

1,2,3. Paragraphs 1, 2 and 3 of the cross-claim are

admitted.

4. B-T admits that the instruction sheet packed with

the Golden Dart antenna carries patent number 3,016,510

and that the box in which the Golden Dart antenna is

packed and other literature relating to the Golden Dart

refer to patented stainless steel stripless screws. The other

allegations of paragraph 4 are denied.

Wherefore, B-T prays for dismissal of the cross-claim

and such other and further relief as the court may find

just and proper.

Hofgren, Wegner, Allen,

Stellman & McCord,

By Richard S. Phillips,

Attorneys for Defendant

and Counterclaimant.

Of Counsel:

Rines and Rines,

Robert H. Rines,

David Rines,

No. Ten Post Office Square,

Boston, Massachusetts 02109.

;

$7.

Unirep Srates Disraict Covsr,

Northern District of Ilinois

Eastern Division.

Name of Presiding Judge, Honorable Julius J. Hoffman.

Cause No. 66 C 567. Date Jan 13 1967.

Title of Cause University of Illinois Foundation v.

Blonder-Tongue Laboratories, Inc., et al.

On Court’s Motion, Cause will be added to the trial call

on Feb 20 1967.

Counsel required to be ready for trial.

Jan 16 1967

Judge Hoffman.

Ix THE Unrrep States Distaicr Count.

(Title Omitted in Printing.)

AMENDED COMPLAINT.

1. Plaintiff, the University of Illinois Foundation, is a

non-profit corporation organized under the laws of the

State of Illinois and has its place of business at Urbana,

Illinois.

2. Defendant, Blonder-Tongue Laboratories, Inc., is @

corporation organized under the laws of the State of New

Jersey and has its principal place of business at 9 Alling

Street, Newark, New Jersey.

3. This is a suit for patent infringement arising under

the patent laws of the United States.

4. United States Letters Patent No. 3,210,767 was duly

and legally issued to Plaintiff on October 5, 1965, as as-

signee of Dwight E. Isbell. Plaintiff is the owner of said

patent and of all rights of recovery thereunder.

5. United States Letters Patent No. Re. 25,740 was duly

and legally issued to Plaintiff on March 9, 1965, as assignee

of Paul E. Mayes and Robert L. Carrel. Plaintiff is the

owner of said patent and of all rights of recovery there-

under.

6. Defendant, Blonder-Tongue Laboratories, Inc., is

infringing said Letters Patents by making or causing to

be made or sold, without license from plaintiff, radio and

television antennas embodying the inventions of said pat-

ents within this District and elsewhere in the United States

and will continue to do so unless enjoined by this Court.

Wherefore, plaintiff prays for the issuance of a judgment

providing that:

1. Plaintiff is the owner of United States Letters Patent

Nos. 3,210,767 and Re. 25,740 and of all rights of recovery

thereunder;

2. Said Letters Patent Nos. 3,210,767 and Re. 25,740

are good and valid in law and have been infringed by

defendant, Blonder-Tongue Laboratories, Inc.

3. An injunction be issued enjoining defendant,

Blonder-Tongue Laboratories, Inc., from further infringe-

ment of said patents permanently and during pendency of

this suit.

4. An accounting be had to determine the damages to

which plaintiff is entitled for such infringement and that

the damages so ascertained be awarded to plaintiff, to-

gether with interest;

5. Plaintiff be granted its costs of this action and such

other and further relief as may seem proper to the Court.

Merriam, Marshall, Shapiro & Klose,

By Basil P. Mann,

A Member of the Firm,

Attorneys for Plaintiff,

30 West Monroe Street,

Chicago, Illinois 60603,

Area Code 312—346-5750.

Date: Jan. 13, 1967,

Of Counsel:

Charles J. Merriam,

William A. Marshall,

Basil P. Mann,

Merriam, Marshall, Shapiro & Klose,

30 West Monroe Street,

Chicago, Illinois 60603,

Area Code 312—346-5750.

Iw THe Unrrep States Distaicr Count.

(Title Omitted in Printing.)

AMENDED ANSWER AND COUNTERCLAIM.

Amended Answer.

Now comes the defendant, Blonder-Tongue Laboratories,

Inc. (hereinafter referred to as BT), by its attorneys, and

answers the amended complaint herein, pursuant to this

Court’s order of January 16, 1967, as follows. .

1,2,3. Paragraphs 1, 2 and 3 of the amended complaint

are admitted.

4. Answering paragraph 4 of the amended complaint,

defendant denies that United States Letters Patent No.

3,210,767 was either duly or legally issued to plaintiff, as

assignee of Dwight E. Isbell, though admitting that such a

patent in fact exists; and defendant is without sufficient

information and belief to admit or deny the remaining al-

legations of this paragraph and therefore leaves plaintiff

to its proof.

5. Answering paragraph 5 of the amended complaint,

defendant denies that United States Letters Patent No.

Re. 25,740 was either duly or legally issued to plaintiff, as

assignee of Paul E. Mayes et al., though admitting that

such a patent in fact exists; and defendant is without suf-

ficient information and belief to admit or deny the remain-

ing allegations of this paragraph and therefore leaves

plaintiff to its proof.

6. Defendant denies each and every allegation of para-

graph 6 of the amended complaint.

Further answering, defendant states that (a) the accused

antennas do not incorporate any patented inventions de-

scribed or properly claimed in the patents in suit and do

rs,

”

5 4

not infringe said patents, assuming, arguendo, their valid-

ity; and (b) that said patents in suit are in fact invalid

and unenforceable against defendant for the reasons set

forth in the amended counterclaim herein.

Wherefore, defendant prays for the dismissal of the

amended complaint and for such other and further relief

in the premises as to this Court may seem just and proper.

Amended Counterclaim.

Now comes the defendant BT, by its attorneys, and by

way of amended counterclaim to the amended complaint

herein, alleged as follows:

1, 2, 3. Counterclaimant realleges paragraphs 1, 2 and

3 of the counterclaim.

Count I—For Unfair Competition.

4. Counterclaimant realleges paragraph 4 of the coun-

terclaim.

5. On information and belief, the plaintiff and counter-

claim defendant, said Foundation, after acquiring rights

under certain so-called log-periodic antenna designs, in-

cluding title to Isbell Patent No. 3,210,767 and Mayes et al.

Patent Re. 25,740, the subject matter of the amended com-

plaint herein, entered into a commercial business arrange-

ment, including a license agreement, with counterclaim

defendant JFD to exploit the said antenna designs and pat-

ents in the field of receiving antennas for television and FM

broadcast, under the terms of which the antennas for said

field would be exclusively manufactured and sold by JFD

and distributed by JFD from its places of business in Chi-

cago, Illinois, and elsewhere, and moneys received there-

from would be divided between JFD and the Foundation

in accordance with certain percentage figures.

6. Further in accordance with said commercial busi-

ness arrangement, on information and belief, the Founda-

tion undertook the primary responsibility of policing said

patents and of aiding the commercial sales of the antennas

of JFD, in which, as before stated, it shared in the sales re-

turns, by news releases and other advertising media using

the name of said Foundation and threatening all manufac-

turers in the industry (and thus counterclaimant BT) with

suit if any so-called log-periodic antennas were made and

sold by them, and by announcements and mailings to cus-

tomers of such other manufacturers, including customers

of BT, of suits which were filed and intended suits, regard-

less of whether such antennas were actually covered by said

patents or any other patent of the Foundation or JFD.

7. On information and belief, said Foundation and JFD

conspired unlawfully to restrain competition in the field of

television and FM broadcast receiving antennas, and

jointly and severally have engaged in unlawfully restrain-

ing such competition by at least the following acts and

possibly others, presently unknown to counterclaimant, but

as to which counterclaimant prays leave to add by amend-

ment to this amended counterclaim upon completion of

discovery herein:

(a) Publication of copious advertisements in national,

technical and popular publications and elsewhere, circu-

lated throughout the United States, including the Northern

District of Illinois, using the names of both said Founda-

tion and JFD, knowingly and falsely representing the scope

of their patent coverage as embracing all antennas of

the so-called log-periodic type, and generally threatening

every antenna manufacturer (which includes counter-

claimant BT) and customers in said field with patent suit

even before the issuance of said Patents No. 3,210,767 and

Re. 25,740, illegally to restrain competition in the manu-

facture and sale of all log-periodic type antennas, includ-

ing those clearly outside such patent coverage.

€

AEBREIER EU tih gta ct 2:

St a

7(b) through 7(j). Counterclaimant realleges para-

graphs 7(b) through 7(j) of the counterclaim.

Count II—Anti-Trust.

8 and 9. Counterclaimant realleges paragraphs 8 and 9

of the counterclaim.

Count IlI—Patent Infringement.

10 through 13. Counterclaimant realleges paragraphs

10 through 13 of the counterclaim.

14. As set forth in paragraph 7(g) hereof, JFD and

the Foundation changed the design of certain of their an-

tennas to copy the invention covered by the BT patent,

Exhibit A, including the JFD models LPV-VU 18, 15, 12, 9

and 6, LPV-TV 19, 16, 13 and 10, and possibly others pres-

ently unknown to counterclaimant, and, since the issuance

of counterclaimant’s patent, and within six years of the

filing of this count, have been inducing the public, within the

Northern District of Illinois and elsewhere in the United

States, to purchase said certain antennas including said

Models manufactured by JFD in clear infringement of the

rights covered by said BT patent, Exhibit A; and JFD

and the Foundation, pursuant to their commercial business

arrangement set forth in paragraphs 5-7 hereof, are offer-

ing for sale, stocking, distributing and selling, within the

Northern District of Illinois and elsewhere in the United

States, antennas including said Models above, that embody

the invention of and infringe said BT patent, Exhibit A,

and will continue so to do unless enjoined by this Court.

Count IV—Declaratory Judgment for Patent Invalidity

and/or Non-Infringement of Patent No. 3,210,767.

15. Counterclaimant reasserts the allegations of para-

graphs 1 through 14 of this amended counterclaim.

16. From the amended complaint herein, it is evident

that a justiciable controversy exists between the parties

under the patent laws of the United States, subject to the

Declaratory Judgment Act.

17. The BT antennas charged in the amended complaint

as infringements of the Isbell Patent No. 3,210,767, do not

use the invention purported to be covered by the claims of

said patent, but, to the contrary, are designed in accord-

ance with BT’s own patent, Exhibit A, and do not infringe

the Isbell’s Patent No. 3,210,767.

18 & 19. Counterclaimant reasserts the allegations of

paragraphs 18 and 19 of the counterclaim.

Count V—Declaratory Judgment for Patent Invalidity

and/or Non-Infringement of Patent Re. 25,740.

20. Counterclaimant reasserts the allegations of para-

graphs 1 through 14 of the amended counterclaim.

21. From the amended complaint herein, it is evident

that a justiciable controversy exists between the parties

under the patent laws of the United States subject to the

Declaratory Judgment Act.

22. The BT antennas charged in the amended complaint

as infringements of Mayes et al. Patent Re. 25,740 do not

use the invention purported to be covered by the claims of

said patent and do not infringe Mayes et al. Patent Re.

25,740.

23. Mayes et al. Patent Re. 25,740 is invalid and void

as Mayes and Carrel were not the first inventors of the

subject matter purported to be covered thereby, the same

having previously been invented by others and having been

published and/or placed on public sale in this country more

than one year prior to the application for the Mayes et al.

original patent, by others, whom counterclaimant prays

leave to add by amendment to this count, after discovery

proceedings.

24. Mayes et al. Patent Re. 25,740 was imvalidly re-

issued as there was no error without deceptive intention in

the original patent, as required by 35 U. S. C. 251.

25. Mayes et al. Patent Re. 25,740 is unenforceable

against counterclaimant in view of the inequitable conduct

of the Foundation above set forth.

Wherefore, counterclaimant prays for preliminary and

permanent injunctions restraining the acts of unfair com-

petition, anti-trust violation and patent infringement com-

plained of herein, and for a declaratory judgment that

counterclaimant BT’s antennas do not infringe Isbell

Patent No. 3,210,767 or Mayes et al. Patent Re. 25,740

and/or that said patents are invalid, void and unenforce-

able, and, in view of the wanton character of the illegal

conduct of the Foundation and JFD, triple damages and

attorneys fees, as provided for by statute, together with

such other and further relief as may seem proper to the

Court.

Hofgren, Wegner, Allen, Stellman

& McCord,

By /s/ Richard S. Phillips,

Attorneys for Defendant and

Counterclaimant.

Rines and Rines,

Robert H. Rines,

David Rines,

No. 10 Post Office Square,

Boston, Massachusetts 02109,

Of Counsel.

January 23, 1967.

Ix THE Unrrep States District Court.

(Title Omitted in Printing)

COUNTERCLAIM DEFENDANT’S REPLY TO

AMENDED COUNTERCLAIM OF COUNTERCLAIM-

ANT, AND CROSS-CLAIM.

Counterclaim defendant, JFD Electronics Corporation

(JFD), replies to the Amended Counterclaim as follows:

Resume, Introductory paragraph to Amended Counter-

claim: Reallegation of paragraphs 1, 2 and 3 of the Coun-

terclaim.

JFD realleges its replies to paragraphs 1, 2 and 3 of the

Counterclaim.

Count I—For Unfair Competition.

Resume, Paragraph 4: Reallegation of paragraph 4 of

Counterclaim.

JFD realleges its reply to paragraph of the Counter-

claim.

Resume, Paragraph 5: The Foundation has exclusively

licensed JFD under Isbell Patent No. 3,210,767 and Mayes,

et al. Patent Re. 25,740 in certain fields. ;

JFD admits that it is an exclusive licensee under said

patents in the field of receiving antennas for television and

FM broadcasting on a royalty basis. All of the other

allegations are denied.

Resume, Paragraph 6: The Foundation has the primary

responsibility of policing the patents and aiding the com-

mercial sales of antennas by JF'D.

JFD admits that under the terms of the license agree-

ment with the Foundation, the Foundation has the initial

responsibility with respect to policing of patents against

infringement and denies all of the other allegations.

Resume, Paragraph 7: The Foundation and JFD have

conspired to restrain competition.

The allegations of this paragraph including sub-para-

graphs (a) through (j) are denied.

Count II—Anti-Trust.

Resume, Paragraphs 8 and 9: Paragraphs 8 and 9 of the

Counterclaim are realleged. ;

JFD realleges its replies to paragraphs 8 and 9 of the

Counterclaim and reasserts by way of Separate and alter-

native defenses to Count II the defenses asserted in its

reply to the Counterclaim.

Count III—Patent Infringement.

Resume, Paragraphs 10 through 13: Paragraphs 10

through 13 of the Counterclaim are realleged.

JFD realleges its replies to paragraphs 10 through 13 of

the Counterclaim.

Resume, Paragraph 14: JFD and the Foundation in-

fringe Patent 3,259,904.

The allegations of paragraph 14 are denied.

Further answering the Amended Counterclaim and for

its further and additional defenses, counterclaim defendant

Counts IV and V—Declaratory Judgment.

JFD is without sufficient knowledge or information to

form a belief as to the truth of the allegations of the para-

graphs of Counts IV and V.

Wherefore, JFD prays that the Amended Counterclaim

be dismissed with costs awarded to JFD and for such other

and further relief as the Court may deem just and proper.

Cro;s-Claim.

Counterclaim defendant realleges all of the paragraphs

of its Cross-Claim to the Younterclaim as herein filed, in-

cluding the prayer for reli as stated therein.

Silverman & Cass,

3y /s/ Myron C. Cass,

105 West Adams Street,

Chicago, Illinois 60603,

726-6006,

Attorneys for Counter-

Of Counsel: claim Defendant.

Ostrolenk, Faber, Gem & Soffen,

10 East 40th Street,

New York, New York 10016.

In tHE Unitep States District Court.

(Title Omtted in Printing)

PLAINTIFF’S REPLY TO AMENDED COUNTER-

CLAIM OF DEFENDANT AND COUNTER-

CLAIMANT.

1. Summary of Amerded Counterclaim Paragraphs 1,

2 and 3. Reallegation «f paragraphs 1, 2 and 3 of the

Counterclaim.

Plaintiff realleges its replies to paragraphs 1, 2 and 3

of the Counterclaim.

Count I—Fo: Unfair Competition.

4. Summary of Amended Counterclaim Paragraph 4.

Reallegation of paragraph 4 of Counterclaim.

Plaintiff realleges its -eply to paragraph 4 of the Coun-

terclaim.

5. Summary of Amaded Counterclaim Paragraph 5.

Se a

The Foundation has exclusively licensed JFD under Isbell

Patent No. 3,210,767 and Mayes, et al. Patent Re. 25,740 in

certain fields.

Plaintiff admits that it has exclusively licensed JFD un-

der Isbell Patent No. 3,210,767 and Mayes, et al. Patent

Re. 25,740 in the field of receiving antennas for television

and FM broadcasting for a royalty based on a percentage

of the sales of antennas covered by the patents which are

manufactured and sold by JFD. The other allegations

of the paragraph are denied.

6. Summary of Amended Counterclaim Paragraph 6.

The Foundation has the primary responsibility of policing

the patents and aiding the commercial sale of antennas by

JFD.

Plaintiff admits that, under the terms of its contract with

JFD, it has the primary right to police Patent No. 3,210,767

and Re. 25,740 against infringement, but denies that it has

the primary responsibility to do so. The other allegations

of the paragraph are denied.

7. Summary of Amended Counterclaim Paragraph 7.

The Foundation and JFD have conspired to restrain com-

petition.

The allegations of this paragraph, including subpara-

graphs (a) through (j), are denied.

Count I]—Anti-Trust.

8. Amended Counterclaim Paragraphs 8 and 9. Real-

legation of paragraphs 8 and 9 of the Counterclaim.

Plaintiff realleges its replies to paragraphs 8 and 9 of

the Counterclaim.

Count I1I—Patent Infringement.

10. Amended Counterclaim Paragraphs 10 through 13.

Reallegation of paragraphs 10 through 13 of the Counter-

claim.

Plaintiff realleges its replies to paragraphs 10 through

13 of the Counterclaim.

14. Summary of Amended Counterclaim Paragraph 14.

Plaintiff infringes Patent 3,259,904.

The allegations of this paragraph are denied.

Count IV—Declaratory Judgment.

(Patent No. 3,210,767).

15. Amended Courterclaim Paragraph 15. Counter-

claimant reasserts the allegations of paragraphs 1-14 of

this amended counterclaim.

Plaintiff reasserts its answers to paragraphs 1-14.

16. Summary of Amended Counterclaim Paragraph 16.

A justiciable controversy exists between the parties.

The allegations of this paragraph are admitted.

17. Summary of Amended Counterclaim Paragraph 17.

The BT antennas, charged by plaintiff to infringe, are not

covered by the claims of Isbell Patent No. 3,210,767.

Plaintiff is without sufficient knowledge or information

to form a belief as to whether the BT antennas charged

as infringements of Isbell Patent 3,210,767 are covered by

Patent No. 3,259,904. The other allegations of the para-

graph are denied.

18. Amended Counterclaim Paragraphs 18 and 19.

Paragraphs 18 and 19 of the Counterclaim are realleged.

Plaintiff realleges its replies to Counterclaim Para-

graphs 18 and 19.

Count V—Declaratory Judgment.

(Patent Re. 25,740).

20. Amended Counterclaim Paragraph 20. Realleges

Paragraphs 1 through 14 of the amended counterclaim.

Plaintiff realleges its replies to paragraphs 1-14.

21. Summary of Amended Counterclaim Paragraph 21.

A justiciable controversy exists between the parties.

The allegations of this paragraph are admitted.

22. Summary of Amended Counterclaim Paragraph 22.

The BT antennas, charged by plaintiff to infringe, are not

covered by the claims of Mayes, et al., Patent Re. 25,740.

The allegations of this paragraph are denied.

23. Summary of Amended Counterclaim Paragraph 23.

Mayes, et al. Patent Re. 25,740 is invalid and void.

The allegations of this paragraph are denied.

24. Summary of Amended Counterclaim Paragraph 24.

Patent Re. 25,740 was invalidly reissued under 35 U. S. C.

251.

The allegation of this paragraph is denied.

25. Summary of Amended Counterclaim Paragraph 25.

Mayes, et al. Patent Re. 25,740 is unenforceable against

BT.

The allegation of this paragraph is denied.

Wherefore, plaintiff prays that the Amended Counter-

claim be dismissed in its entirety with costs to plaintiff.

Merriam, Marshall Shapiro & Klose,

By: Basil P. Mann,

A Member of the Firm.

Attorneys for Plaintiff,

30 West Monroe Street,

Chicago, Illinois 60603,

Area Code 312-346-5750.

Of Counsel:

Charles J. Merriam,

William A. Marshall,

Basil P. Mann,

Merriam, Marshall, Shapiro & Klose,

30 West Monroe Street,

Chicago, Illinois 60603,

Area Code 312-346-5750.

In tHe Unrrep States District Court.

(Title Omitted in Printing)

REPLY OF BLONDER-TONGUE LABORATORIES

INC. TO CROSS-CLAIM OF JFD ELECTRONICS

CORPORATION.

Defendant, Blonder-Tongue Laboratories Inc., by its at-

torneys, answers the realleged cross-claim of JFD Elec-

tronics Corporation as follows:

Blonder-Tongue Laboratories Inc. realleges all of the

paragraphs of its reply to the cross-claim as herein filed.

Hofgren, Wegner, Allen, Stellman

& McCord,

By: Richard S. Phillips,

Attorney for Defendant and

Counterclaimant.

February 3, 1967.

In THe Unitep Srates Distaict Court.

(Title Omitted in Printing.)

NOTICE OF APPEAL TO COURT OF APPEALS.

Notice is hereby given that Blonder-Tongue Laboratories,

Inc., Defendant and Counterclaimant above named, hereby

appeals to the United States Court of Appeals for the

Seventh Circuit from the final judgment of this Court

entered in this action on the 27th day of June, 1968.

/s/ Richard S. Phillips,

Attorneys for Defendant,

Hofgren, Wegner, Allen,

Stellman & McCord,

20 North Wacker Drive,

Chicago, Illinois 60606,

Telephone: 346-1630.

(Affidavit and Certificate of Clerk omitted in Printing.)

In tHe Unitep States Court or APPEALS.

For the Seventh Circuit.

September Term, 1968 April Session, 1969

No. 17153 >

University of Illinois Foundation,

Plaintiff and Counter

Defendant-Appellee,| Appeal from the

vs. United States Dis-

Blonder-Tongue Laboratories, Inc., trict Court for the

Defendant and Counter ‘ Northern District

Claimant-A ppellant, of Illinois, Eastern

v8. Division.

JFD Electronics Corporation,

Counterclaim-Defendant-

Appellee. )

February 13, 1970.

Before Castie, Chief Judge, Durry, Senior Circuit Judge,

and Famcuup, Circuit Judge.

Famcuip, Circuit Judge.

The University of Illinois Foundation brought action

against Blonder-Tongue Laboratories, Inc. for infringe-

ment of two patents in the field of radio and television

antennas. Blonder-Tongue asserted invalidity of the two

patents. JFD Electronics Corporation, licensed under the

patents, was made a party, and Blonder-Tongue counter-

claimed against JFD (principally) and the Foundation,

for unfair competition, violation of antitrust laws, and in-

fringement of a Blonder-Tongue patent.

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The district court decided the Foundation’s patents were

valid and infringed, dismissed the unfair competition and

antitrust charges, and found claim 5 of the Blonder-Tongue

patent obvious and invalid. Blonder-Tongue has appealed.

Blonder-Tongue argues here, in addition to the merits

issues presented to the district court, that it was not given

a fair trial.

1. Alleged deprivation of a fair trial.

In October, 1967, after a number of postponements for

the convenience of one or the other of the parties or the

court, trial was set for December 18. Blonder-Tongue

asserts that it was ready for trial on that day. The court,

however, was unable to reach the matter and held it on call

until December 20, then until December 26, then until the

27th, and then until the 28th. Trial began December 28 and

lasted to January 16.

During the delay, Blonder-Tongue moved for postpone-

ment until at least February 13, showing that Mr. Blonder,

its principal officer, and Professor Chu, its expert, could

have appeared at a trial beginning December 18, but had

conflicting and compelling other commitments in late De-

cember and January.’

The court denied the motions. The trial scheduled for

December 18, but actually begun December 28, lasted more

than two weeks. Mr. Blonder did testify. Professor Chu

(who had gone to Taiwan in late December) did not, but

counsel has not shown the substance of testimony expected

from him and not otherwise available. We find no abuse

of discretion in proceeding with the trial.

1. Although reference is made to being deprived of ‘‘intended

customer and other witnesses’’ there is no real explanation why

these could not have been produced at the trial in January as well

as in December.

2. The patents involved.

The Foundation is assignee of a patent, No. 3,210,767,

issued October 5, 1965 to D. E. Isbell on an application filed

May 3, 1960: Frequency Independent Unidirectional An-

tennas. This patent is reproduced in University of Illinois

Foundation v. Winegard Company (S. D. Iowa, 1967), 271

F. Supp. 412, 420-424.

The Foundation is also assignee of a patent, No. Re

25,740, issued March 9, 1965 to P. E. Mayes, et al.: Log

Periodic Backward Wave Antenna Array. This patent.is

a reissue of No. 3,108,280, applied for September 30, 1960.

Blonder-Tongue is assignee of a patent, No. 3,259,904,

issued July 5, 1966 to I. P. Blonder et al. on an application

filed November 21, 1963: Antenna Having Combined Sup-

port and Lead-In.

3. Alleged Invalidity of Isbell on account of

anticipation by publication.

Isbell was associated with the Antenna Laboratory of

the University of Illinois in performance of an Air Force

contract. Reports were prepared and distributed from

time to time pursuant to the contract. Quarterly Engineer-

ing Report No. 2 contained a description of Isbell’s inves-

tigation of a type of log-periodic antenna, and it is con-

ceded that if this report was published more than one year

before May 3, 1960, the patent was invalid under 35 U.S. C.

§ 102(b). The printer delivered copies of the report to the

office of Miss Johnson, technical editor of the Electrical

Engineering Research Laboratory, April 30, 1959. Copies

were mailed out of Miss Johnson’s office, pursuant to the

Air Force contract, to persons on the distribution list

May 5.

Blonder-Tongue contends that this report was accessible

res

to the public on and after April 30, 1959 and therefore a

printed publication more than one year before May 3, 1960.

It appears that the Engineering Research Laboratory

had a “‘library’’ or reading room near Miss Johnson’s

office. It was unattended, and she had the keys to the cabi-

nets in which materials were kept. It is unlikely that a copy

of the report in question reached the “‘library’’ before

May 3. Miss Johnson testified that a report would nor-

mally not be processed and made available as a library

copy for a week or two after delivery by the printer.

The testimony as to public availability of copies on hand

in her office before mail distribution was equivocal. Miss

Johnson testified that if counsel had come to her office on

April 30 and requested a copy of the report, he would

“‘very likely’? have been given one. She believed the copies

were ‘available as a library reference’? on the date re-

ceived in her office.

Miss Johnson’s immediate superior testified, however,

that it was the policy to distribute quarterly reports to the

list supplied by the Air Force before making them avail-

able to others.

The finding that the circumstances of the possession of

the reports from April 30 to May 5 did not represent pub-

lication is not clearly erroneous.

4. Alleged Obviousness of Isbell.

We are met at the outset with the fact that the district

court for the southern district of Iowa has decided that

Isbell is invalid for obviousness? That decision was

affirmed by the eighth circuit? (although one of the district

court’s findings was deemed erroneous) and certiorari has

2. University of Illinois Foundation v. Winegard Company

(1967), 271 F. Supp. 412.

3. (1968), 402 F. 2d 125.

been denied.* It would seem sound judicial policy that the

adjudication of that issue against the Foundation in one

action where it was a party would provide a defense in

any other action by the Foundation for infringement of

the same patent.’

That, however, is not the law in this field. ‘‘While the

earlier decision may by comity be given great weight in a

later litigation and thus persuade the court to render a like

decree, it is not res adjudicata and may not be pleaded as

a defense.’”*

We approach the carefully stated decisions of the district

court and court of appeals in the Winegard action with

great respect, but our own analysis, on the basis of the

record and the findings of fact made by the district court

in this action, and after considering the legal conclusions

of the district court, leads us to a different result.

We quote here from the opinion of the district court in

this action his description of the problem dealt with and

the Isbell solution:

‘‘The plaintiff’s patents in suit relate to antennas having

unidirectional radiation patterns essentially independent of

frequency over a wide band of frequencies. The antennas

covered by the patents are equally suitable for both the

reception and the transmission of radiated electromagnetic

energy (which includes radio and television frequency sig-

nals), but our primary concern is with their use for televi-

sion reception. The characteristics desired in an antenna

used for the reception of television signals are a function

of the nature of frequency transmission. Although the

frequency of a transmitted wave remains essentially con-

4. (1969), 394 U. S. 917, 89 S. Ct. 1191, 22 L. Ed. 2d 452.

5. See Bernhard v. Bank of America Nat. Trust & Sav. Ass’n.

(1942), 19 Cal. 2d 807, 122 P. 2d 892, 894-895.

6. Triplett v. Lowell (1936), 297 U. S. 638, 642, 56 S. Ct. 645,

647, 80 L. Ed. 949, 952.

stant as the wave moves through space, the strength of the

signal decreases with increasing distance. An antenna is

used to isolate the desired signal from interfering signals

which exist at the point of reception and to make this sig-

nal available to the television receiver, via a transmission

line, in as large a magnitude as possible.

The characteristics of an antenna which measure its per-

formance are its gain, its bandwidth, its directivity, and

its impedance. ‘Gain’ is the measure of its ability to

increase the strength of an incoming signal relative to a

fixed standard; high gain is a desired characteristic.

‘Bandwidth’ is its capacity to receive, without adjust-

ment, signals of different frequencies with essentially con-

stant gain. An antenna whose reception is essentially in-

dependent of frequency over a wide band of frequencies is

known as a ‘wide-band’ or ‘frequency independent’ an-

tenna. ‘Directivity’ is an antenna’s ability to receive

signals from one desired direction as compared to all other

directions. Television antennas are preferably unidirec-

tional in order to eliminate interference with the desired

signal and the ‘ghost’ images such interference produces.

‘Impedance’ is a measure of an antenna’s ability to trans-

fer energy to the transmission line. An antenna’s imped-

ance should match as closely as possible the impedance of

the transmission line to prevent the formation of ‘ghosts.’

In the design of antennas, one desired characteristic is

often obtained at the expense of another. The antenna

designer’s goal, of course, is to achieve the best possible

balance of the several different characteristics.

The simplest antenna which has been put to practical

use for television reception is the dipole antenna, which

consists of a pair of linear components extending from each

side of a transmission line fed in the center at the inner

ends of the linear components. Shortly after 1954, the

log-periodic principle of antenna design was developed.

The structures designed in accordance with this principle

have cyclic performance characteristics which repeat peri-

odically as frequency is increased. Although some log-

periodic structures have broadband characteristics, most

do not. While a log-periodic structure can readily be

cannot be predicted whether such a structure will have

broadband characteristics and thus operate successfully

as a log-periodic antenna.

The invention covered by the Isbell patent was made by

Dwight E. Isbell during the course of his work at the

University of Illinois Antenna Laboratory under an

Air Force contract. Isbell’s invention is a log-periodic

antenna which contains a number of dipole elements

arranged in a substantially planar, parallel arrangement

to form an antenna array. The length of the dipoles vary

from one end of the antenna to the other in accordance

with a scale factor, a constant less than one, which is used

to establish the length of adjacent elements. The spacing

between adjacent elements also varies, preferably in the

same manner. The dipoles are fed from the end of the

antenna having the shortest dipoles by a twin-line feeder

which provides a phase reversal of 180 degrees between

adjacent dipoles by alternately connecting successive di-

pole halves. The Isbell antenna provides unidirectional

radiation patterns of essentially constant beam width and

input impedance for any desired band width.’”

The prior art (some of which was not cited by the patent

office) is described in Winegard, 271 F. Supp. 412, 416-418,

and illustrations of portions of the prior art are appen-

dices to that opinion, pp. 425-429.

It is true that the array described by [sbell appears

similar in several respects to arrays known in the prior

7. An informative description also appears in the district court

opinion in Winegard, 271 F. Supp. at 414-415.

and the spacing between them varies; (4) two transmis-

with the logarithm of the frequency.’* Dr. Du Hamel

testified that the log-periodic concept is one ‘whereby you

design the antenna and all the dimensions so that the elec-

trical performance must repeat periodically with the log-

constant factor, Tau.’

The concept of log-periodic antennas was known in the

prior art. The crucial question is whether it would have

along transmission lines with such relationship between

8. Jasik, Antenna Engineering Handbook, first ed., 1961, 18-10.

the dimensions of successive dipoles as to produce a log-

arithmically periodic structure.

It is clear, from the record, that not every logarithmically

periodic antenna has the desired frequency independent,

broadband characteristics. It is also clear that there is no

set of principles by which to predict the presence or

absence of such characteristics in such structures.

‘‘There is an infinite variety of log-periodic struc-

tures.’”

iz a * e *

‘*It should be pointed out that many types of log-

periodic structures are not broad-band because of

either extreme variation over a period of severe end

effect which destroys the periodicity of the electrical

characteristics. Only the successful structures are

described herein. Unfortunately, it is not possible to

determine a priori the frequency-independent type of

log-periodic antennas.

‘*Since log-periodic antennas are too complex to

analyze by present-day theoretical methods, they must

be investigated by logical experimental methods.

However, their repetitive nature greatly simplifies the

initial experimental investigation because the charac-

teristics need only be measured over one or two periods

of frequency. The operation over other periods may

be readily predicted. Although a large amount of

experimental data has been obtained, much remains

to be done.’’”

The exposition of the theory of logarithmically periodic

antennas principally relied on by Blonder-Tongue is an

article, published in March, 1958, by Drs. Du Hamel and

Ore." Although the article asserts the general principle

that ‘‘the geometry of logarithmically periodic antenna

structures is defined so that the pattern and impedance

9. Jasik, op. cit. 18-11.

10. Ibid, 18-13.

11. R. H. Du Hamel and F. R. Ore, Logarithmically Periodic

Antenna Designs, 1958, I. R. E. National Convention Record, 139.

repeat periodically with the logarithm of the frequency’’,

the structures described as successful are markedly dif-

ferent in type and configuration from the array of simple

dipoles along transmission lines.

Jasik, writing in 1961, says of the Isbell work, after

describing more complex structures ‘‘A recent and rather

simple type of log-periodic antenna is illustrated in Fig.

18-11. It consists of an array of dipoles with lengths and

spacings arranged in a log-periodic manner. The dipoles

are excited by a uniform two-wire line with the line trans-

posed between adjacent dipoles.’"* He does go on to say:

‘*It may be noticed that this antenna may be derived from

that of Fig. 18-9 [two-winged ‘‘Trapezoidal Tooth Log

Periodic Structure’’] by letting the tooth width and the

angle [beta] approach zero and then folding the two half

structures about the horizontal axis so that the angle

[psi] approaches zero.’’ The observation appears correct

but we deem it a hind-sight analysis, and not an indication

that it would have been obvious to modify previously known

figures in the manner indicated and thus produce the

Isbell array.

As noted by the district court, Drs. Du Hamel and Ore

filed a patent application March 14, 1958" describing struc-

tures of types which seem significantly different from a

dipole array.

Dr. Du Hamel testified that he did not design an antenna

using the Isbell configuration ‘‘because the design prin-

ciples which we were working on did not make this an

obvious result.’? He explained that along with the log-

periodic configuration concept, and the included angular

concept, design had been influenced by another concept,

of a self complementary structure, one which meets the

12. Op. cit. p. 18-13.

18. Granted as No. 3,079,602, Feb. 26, 1963: Logarithmically

Periodic Rod Antenna.

test that an identical structure would result from replacing

the solid with air and the air with solid. ‘‘The comple-

mentary condition proved to not be a necessary condition

in our later work, but we were still led by this to some

extent in designing the log-periodic antennas that we did

design.’’

When Dr. Du Hamel learned that the Isbell antenna

worked ‘‘I was quite surprised at the simplicity of the

structure, and my pride was a little bit hurt in that I

had not thought of it, too, or first. * * * At first I was

somewhat surprised that they worked but after thinking

more about it and thinking back, then I was not surprised.

At first I was surprised that it did work.’’

From the record before us, we do not view the situation

as one where it was obvious to antenna designers that a

simple dipole and the segment of line between it and the

next dipole in an array would describe a cell fitting the

concept of logarithmically periodic antennas, nor that some

arrangement of simple dipoles in geometric progression

would be a frequency independent broadband antenna,

making it simply a matter of logical experimentation to

find one.

With all respect to our brethren of the eighth circuit,

who saw the problem at the time of Isbell’s work as ‘‘one

of trial and error with a combination of commonly used

elements operating within known principles of electronics

and mechanics to achieve a desired result’’,"* we conclude,

with the district judge here, that the Isbell patent was not

invalid for obviousness.

5. Validity of Mayes patent. -

In the district court, Blonder-Tongue challenged the

validity of Mays on the grounds of obviousness; that the

patentees, Mayes and Carrel, were not the inventors; and

14. 402 F. 2d 128.

that the patent was obtained by fraud on the patent office.

Blonder-Tongue has stressed the last two on appeal.

Obviousness.

The district court found that Mayes ‘‘incorporates the

structural characteristics of the Isbell antenna, with one

modification: the dipoles in the array are inclined or V’d

* * * While the Isbell antenna’s dipoles provide a broad-

band unidirectional antenna with an upper frequency limit

established by the length of the shortest dipole in the

antenna, the Mayes et al. V shaped elements permit the

antenna to be operated over much higher bands of fre-

quency and with increased directivity thus increasing the

effective frequency range of the antenna and constituting

an improvement over the Isbell invention.’’

Mayes and Isbell both worked at the Antenna Laboratory.

As already seen, the Isbell structure was described in

Quarterly Report No. 2, published May 5, 1959. The idea

of V’ing the Isbell dipoles was conceived in June 1959.

Thus the Isbell disclosure was prior art with respect to

Mayes, and the difference between subject matter of Mayes

and prior art is the V shape of the dipoles.

Although we have concluded that it would not have

been obvious at the time of the Isbell invention to experi-

ment with arrays of simple dipoles in an effort to find a

frequency independent broadband log periodic antenna,

we do conclude that, given the Isbell structure, it would

have been obvious to experiment with simple modifications

of it, such as the V’ing disclosed in Mayes.

Although we prefer to rest our decision that Mayes is

invalid upon the ground of obviousness, the facts which

render the other two grounds at least plausible lend sup-

port to the conclusion of obviousness.

Invention by another.

On October 6, 1959, Dr. Mayes filled out a form reporting

the invention to the Office of Naval Research. One space

was designated: ‘‘Earliest date and place invention was

conceived (Brief outline of circumstances).’’ He inserted

the following: ‘‘On June 11, 1959, Mr. E. M. Turner of

Wright Air Development Center asked if the angles of

dipoles on a log period dipole array had been used as a

design parameter. This was tried with no significant

change in performance. The idea of operating at higher

frequencies so that a change would be obtained then lead

to the present invention.”’’

The same report indicates that the first operating model

was completed June 23 and the first test, with results suf-

ficiently good to call for further testing, was made the

same day.

The district court classified the thought behind Turner’s

question as mere surmise or theory rather than the type

of suggestion held to be really the invention in Atlantic

Works v. Brady (1883), 107 U. S. 192, 2 8S. Ct. 225, 27

L. Ed. 438.

Although Turner’s question suggested only one simple

change, such change is the whole difference between Mayes

and Isbell. Whether the district court erred on the point

or not, the episode is persuasive toward a conclusion of

obviousness.

Alleged fraud on the patent office.

On November 6, 1962, during the prosecution of the

original Mayes application, the examiner rejected certain

claims. He referred to an article by Isbell in I. R. E. Trans-

action on Antennas and Propagation, published in May,

1960 and stated, in part, ‘‘No invention would be involved

15. 1 Deller, Walker on Patents, 2nd ed. § 68.

in merely arranging the Isbell dipoles in some sort of V-

shape as taught by Rowland.’’ Although a footnote to the

title disclosed that the article was a revised manuscript

the original of which had been previously published June

10, 1959, the examiner did not refer to the 1959 publication

date, and perhaps overlooked it.

On January 10, 1963, Mayes responded to the action

of November 6 by filing an affidavit under Rule 131 of the

patent office, asserting that Mayes and his co-applicant,

Carrel, completed their invention before May, 1960, the

purpose, as counsel wrote the patent office, being ‘‘to carry

their work back of the date of the publication in the IRE

and back of the Isbell application filing date of May 3,

1960.’’ Neither Mayes nor counsel pointed out the fact,

known to Mayes, that the Isbell article, with very slight

revision, had first been published on June 10, 1959 at about

the time of the invention and more than one year prior

to the filing date.

Blonder-Tongue argues that a fraud was thus practiced.

The district court rejected the allegation of fraud on the

principle that an applicant is under no obligation to dis-

close his knowledge of references, other than those which

disclose the same invention, citing Wen Products, Ine. v.

Portable Electric Tools, Inc. (7th Cir., 1966), 367 F. 2d

764, 767,

We do not think the Wen principle would control a situ-

ation where an applicant affirmatively presents a half-

truth to the patent office in order to overcome a rejection

when he must know that the whole truth would support

rather than overcome the rejection. The applicant’s knowl-

edge of a fact as to which he knows the patent office is

ignorant or mistaken and which would be material under

the theory he knows the patent office is applying would

impose an obligation of candor.

We are reluctant, however, to find fraud in this instance

because of the circumstance that the article relied on by

the patent office itself disclosed the correct first publication

date.

But these facts at least detract from the presumption of

validity. It is clear that the publication date of June 10,

1959 would, on the theory followed by the examiner, have

prevented issuance of the patent. Presumably the same

would be true of the publication of Quarterly Report No.

2, May 5, 1959.

6. Infringement.

Apparently it is difficult or impossible to construct the

Isbell antenna (or similar arrays with two transmission

lines) so that all dipole elements lie exactly within one

plane. The Isbell patent states that the dipoles are ‘*sub-

stantially coplanar’. The dipole elements of the accused

Blonder-Tongue antennas lie in one of two planes which

are about 1/18 of a wavelength® apart. The district court

concluded these elements are substantially coplanar, and

we agree.

This resolves the only issue argued with respect to the

infringement found by the district court. If other issues

become important as a result of our decision that Mayes

is invalid, they will have to be resolved on remand.

7. Unfair competition and antitrust claims. :

Blonder-Tongue made a series of charges of unfair

competition and the like. The allegations included exag-

gerated claims in advertising, threatened litigation against

competitors, improper news releases concerning litigation,

intentional patent mismarking, fraud on the patent office,

already discussed, raiding of Blonder-Tongue by JFD to

*The parenthetical phrase ‘‘(of the order of an inch)’’ was

stricken by the Court, Apr. 12, 1970, on defendant’s petition for

clarification, reconsideration and rehearing.

recruit key personnel, and attempting to force customers

to buy unpatented articles as a condition of obtaining

patented ones.

Extended discussion is unnecessary. The best that can

be said in any instance is that Blonder-Tongue presented

evidence from which the district court might, but was not

compelled to, draw inferences supporting the particular

charge. Contrary inferences were equally, or more, reason-

able. The findings made were not clearly erroneous, the

standards applied as to fairness of trade practices were

appropriate, and we agree with the conclusions reached.

8. Obviousness of Blonder patent subject matter.

The Blonder alleged invention was “‘ primarily directed’,

according to the specifications, to improvement of mount-

ing structures of antennas, stabilizing of outdoor perform-

ance, and providing for ready adjustability in outdoor

performance. Blonder does not teach a log-periodic ar-

rangement. The very nature of the subject matter suggests

that it was directed at the type of problems which might

be solved when addressed by persons with ordinary skill

in the art.

The district court described the claim at issue as follows:

‘The antenna of Claim 5 comprises a pair of parallel

conductors (twin booms) spaced apart vertically in

a vertical plane. Dipole elements lying in vertically-

spaced horizontal planes extend from the conductors

at successive points along the length of the conductors,

with dipole lengths increasing gradually from one

end of the conductors to the other, the shortest dipoles

at the front end of the conductors, where terminals

connect a parallel wire transmission line to the an-

tenna. Rigid insulating means, maintaining the termi-

nals spaced apart, are connected with a strain relief

or standoff for supporting the transmission line near

the front end. Further rigid insulating means main-

tain the conductors’ spacing at a region remote from

the front end. The vertical distance between conduc-

tors is less than the distance between successive dipole

elements and less than the wavelengths of the fre-

quency band of the antenna’s operation.”’

Unfortunately for our performance of the task of re-

view, the district court did not describe the scope and con-

tent of the prior art, identify the differences between the

prior art and claim 5, nor state the level of ordinary skill

in the pertinent art. We would prefer that these steps be

meticulously taken.**

The court did, however, list as prior art a publication,

two types of antennas, and 6 patents, all in addition to the

patents cited by the patent office. The court concluded that

the differences between claim 5 and the prior art would

have been obvious.

The Blonder-Tongue briefs also fell short in setting

forth the analysis which it would contend ought to have

been made.

If we understand its position correctly, Blonder-Tongue

places chief reliance upon the fact that while Jsbell teaches

that the two planes in which the dipole elements lie are

to be close enough together that the dipoles are substan-

tially coplanar, Blonder teaches that the planes may be

separated by some distance, but less than the wavelength

of the band. A substantial separation of these planes is

clearly shown, however, in the 1961 publication cited by

the court, Technical Report No. 52, of the Antenna Labora-

tory.

Mr. Blonder testified that all the mechunical elements

in claim 5 were old. Combining them would, we think,

have been obvious to a person of ordinary skill in the art.

16. See Cloud v. Standard Packaging Corporation (7th Cir.,

1967), 376 F. 2d 384; Gass v. Montgomery Ward & Co. (7th Cir.,

1967), 387 F. 2d 129; United States Gypsum Company v. National

Gypsum Company (7th Cir., 1967), 387 F. 2d 799, 801-802, cert.

den. 390 U. S. 988, 88 S. Ct. 1184, 19 L. Ed. 2d 1292.

nt IO

anne

Insofar as the judgment determined that Reissue Patent

No. 25740 is valid and enforceable, enjoined infringement

thereof, and provided for the determination and award

of damages for such infringement, the judgment is re-

versed and the cause remanded for such further proceed-

ings as may be required, consistent with this opinion. In

all other respects, the judgment is affirmed. Defendant

Blonder-Tongue shall recover from plaintiff Foundation

one-third of its costs on appeal.

In tHE Unttep States District Court.

(Title Omitted in Printing)

MEMORANDUM OF DECISION.

Julius J. Hoffman, District Judge. The plaintiff and

counterclaim defendant, The University of Illinois Founda-

tion (hereinafter ‘‘the Foundation’’), brings this suit,

charging the infringement of two patents, against the

defendant and counterclaimant, Blonder-Tongue Labora-

tories, Inc. (hereinafter ‘‘Blonder-Tongue’’). The plain-

tiff is a not-for-profit corporation established under the

laws of the State of Illinois and having its place of business

in Champaign, Illinois. One of the Foundation’s functions

is to hold and administer patents covering inventions de-

veloped at the University of Illinois. Blonder-Tongue, a

New Jersey corporation with its principal place of business

in Newark, New Jersey, is engaged in the manufacture

and sale of equipment, including antennas, for the distri-

bution and reception of television signals. The plaintiff

alleges that Blonder-Tongue has infringed two patents

held by the plaintiff by manufacturing and selling tele-

vision antennas embodying the inventions of these patents.

Blonder-Tongue has denied the validity of the patents

— ee ee

in suit and has asserted that, even if they were valid, they

have not been infringed by Blonder-Tongue. Blonder-

Tongue has also denied their enforceability. In addition,

Blonder-Tongue has brought a counterclaim against the

Foundation and JFD Electronics Corporation (herein-

after ‘‘JFD’’), a New York corporation in the business of

manufacturing and selling, among other products, an-

tennas for use with home television receivers. The counter-

claim charges that the Foundation and JFD have been

guilty of unfair competition, antitrust violations, and in-

fringement of one claim of a patent held by Blonder-

Tongue.

This court has jurisdiction of the cause under 28 U. S. C.

§ 1338. Blonder-Tongue, which does not have ‘‘a regular

and established place of business’’ in this District, was

joined as a defendant with one of its Chicago distributors,

Allied Radio Corporation, but waived its defense of im-

proper venue and allowed Allied Radio Corporation to be

dismissed.

Buionver-Toneve’s Motion to Dismiss.

Blonder-Tongue’s motion to dismiss the complaint for

failure to prove a prima facie case, which this court stated

during trial it would decide after the close of all the evi-

dence, is denied.

Tue Founpation’s Patents.

The plaintiff’s patents in suit are Patent No. 3,210,767,

entitled ‘‘Frequency Independent Unidirectional Anten-

nas,’’ which issued to the plaintiff on October 5, 1965, as

the assignee of Dwight E. Isbell (hereinafter referred to

as the Isbell patent), and Reissue Patent No. 25,740, en-

titled ‘‘Log Periodic Backward Wave Antenna Array,’’

which issued to the plaintiff on March 9, 1965, as the

_ en

assiignee of Paul E. Mayes and Robert L. Carrel (herein-

afteer referred to as the Mayes et al. patent).

The Isbell patent has been previously litigated in the

Unitted States District Court for the Southern District of

Iowza in University of Illinois Foundation v. Winegard

Comnpany, 271 F. Supp. 412 (S. D. Iowa 1967). The Isbell

pateent was there held invalid solely on the issue of obvious-

nesss. This court is, of course, free to decide the case at bar

on tkhe basis of the evidence before it. Triplett v. Lowell,

297 U. S. 638, 642 (1936). Although a patent has been

adjuadged invelid in another patent infringement action

against other defendants, patent owners cannot be deprived

‘‘of tthe right to show, if they can, that, as against defend-

ants; who have not previously been in court, the patent is

validi and infringed.’’ Aghnides v. Holden, 227 F. 2d 949,

951 ((7th Cir. 1955). On the basis of the evidence before it,

this «court disagrees with the conclusion reached in the

Wineegard case and finds both the Isbell patent and the

Mayees et al. patent valid and enforceable patents. It fur-

ther : finds that the two patents have been infringed by

Blondder-Tongue.

DESCRIPTION OF THE PaTENTs.

Thee plaintiff’s patents in suit relate to antennas having

unidirrectional radiation patterns essentially independent of

frequaency over a wide band of frequencies. The antennas

covereed by the patents are equally suitable for both the

receptition and the transmission of radiated electromagnetic

energyy (which includes radio and television frequency sig-

nals), , but our primary concern is with their use for tele-

vision 1 reception. The characteristics desired in an antenna

used ffor the reception of television signals are a function

of thee nature of frequency transmission. Although the

frequency of a transmitted wave remains essentially con-

stant aas the wave moves through space, the strength of the

signal decreases with increasing distance. An antenna is

used to isolate the desired signal from interfering signals

which exist at the point of reception and to make this

signal available to the television receiver, via a transmis-

sion line, in as large a magnitude as possible.

The characteristics of an antenna which measures its per-

formance are its gain, its bandwidth, its directivity, and

its impedance. ‘‘Gain’’ is the measure of its ability to

increase the strength of an incoming signal relative to a

fixed standard; high gain is a desired characteristic.

‘‘Bandwidth”’ is its capacity to receive, without adjust-

ment, signals of different frequencies with essentially con-

stant gain. An antenna whose reception is essentially inde-

pendent of frequency over a wide band of frequencies is

known as a “‘wide-band’’ or ‘‘frequency independent”’ an-

tenna. ‘‘Directivity’’ is an antenna’s ability to receive

signals from one desired direction as compared to all other

directions. Television antennas are preferably unidirec-

tional in order to eliminate interference with the desired

signals and the ‘‘ghost’’ images such interference produces.

‘<Impedance”’ is a measure of an antenna’s ability to trans-

fer energy to the transmission line. An antenna’s im-

pedance should match as closely as possible the impedance

of the transmission line to prevent the formation of

‘‘ghosts.’’ In the design of antennas, one desired charac-

teristic is often obtained at the expense of another. ~The

antenna designer’s goal, of course, is to achieve the best

possible balance of the several different characteristics.

The simplest antenna which has been put to practical use

for television reception is the dipole antenna, which consists

of a pair of linear components extending from each side of

a transmission line fed in the center at the inner ends of

the linear components. Shortly after 1954, the log-periodic

principle of antenna design was developed. The structures

designed in accordance with this principle have cyclic per-

formance characteristics which reyeat periodically as fre-

quency is increased. Although some log-periodic structures

have broadband characteristics, most do not. While a log-

periodic structure caz, readily be designed by one using the

log-periodic design principle, it cannot be predicted

whether such a structure will have broadband characteris-

tics and thus operate successfully as a log-periodic antenna.

The invention covered by the Isbell patent was made by

Dwight E. Isbell during the course of his work at the Uni-

versity of Illinois Antenna Laboratory under an Air Force

contract. Isbell’s invention is a log-periodic antenna which

contains a number of dipole elements arranged in a sub-

stantially planar, parallel arrangement to form an antenna

array. The lengths of the dipoles vary from one end of the

antenna to the other in accordance with a scale factor, a

constant less than one, which is used to establish the length

of adjacent elements. The spacing between adjacent

elements also varies, preferably in the same manner. The

dipoles are fed from the end of the antenna having the

shortest dipoles by a twin-line feeder which provides a

phase reversal of 180 degrees between adjacent dipoles by

alternately connecting successive dipole halves. The Isbell

antenna provides unidirectional radiation patterns of

essentially constant beam width and input impedance for

any desired band width.

The invention covered by the Mayes et al. patent was

made by Paul E. Mayes and Robert L. Carrel during the

course of their work at the University of Illinois under the

same Air Force contract. Their antenna incorporates the

structural characteristics of the Isbell antenna, with one

modification: the dipoles in the array are inclined or V’d.

The apex formed by the V’s points in the same direction as

the signal received by the antenna. The dipole element size

increases in the same direction. While the Isbell antenna’s

dipoles provide a broadband unidirectional antenna with

ere

an upper frequency linit established by the length of the

shortest dipole in the antenna, the Mayes et al. V-shaped

elements permit the antenna to be operated over much

higher bands of frequency and with increased directivity,

thus increasing the effective frequency range of the

antenna and constituting an improvement over the Isbell

invention.

Vainry or THE PATENTS.

Patentability is dependent upon three conditions ex-

plicitly set out in the federal statutes governing patents:

novelty and utility, asdefined in 35 U. S. C. § 101 and § 102,

are non-obviousness, as set out in §103. Graham v. John

Deere Co., 383 U. S 1, 17 (1966). The defendant has

charged that the Isbell patent is invalid because it is ob-

vious, is anticipated by two earlier inventions, and was

disclosed in a printed publication more than one year prior

to the filing of the Isbell application. Blonder-Tongue also

charges that the Mayes et al. patent is invalid because it

is obvious, was not conceived by its purported inventors

but by another, and was secured originally by a fraud upon

the Patent Office.

A. The Isbell Patent.

The § 103 condition, non-obviousness, ‘‘lends itself to

several basic factual inquiries.’”’ As the Supreme Court

has stated, under § 103,

the scope and content of the prior art are to be deter-

mined ; differences between the prior art and the claims

at issue are to be ascertained ; and the level of ordinary

skill in the pertinent art resolved. Against this back-

ground, the obviousness or nonobviousness of the sub-

ject matter is determined. Such secondary considera-

tions as commercial success, long felt but unsolved

needs, failure of others, etc., might be utilized to give

light to the circumstances surrounding the origin of

the subject matter sought to be patented. As indicia

of obviousness or nonobviousness, these inquiries may

have relevancy,

Graham v. John Deere Co., 383 U. 8. 1, 17-18 (1966).

The primary inquiry, therefore, is the scope and content

of the prior art, the differences between that prior art and

the claims at issue, and the level of ordinary skill in the

field. Blonder-Tongue asserts that Isbell’s invention is

obvious in view of the prior art, specifically (1) the K. O.

antenna, the Channel Master antenna K. 0. model 1023

court disagrees.

The K. O. antenna, sold commercially by Channel

Master Corporation in or about 1955, was an antenna

which employed folded dipoles. Such folded dipoles differ

significantly from the straight or simple dipoles used by

Isbell. Farther, there was no pattern in the K. O, an-

The DuHamel and Ore article, in its own lan

guage,

“reports research on new types of broadband logarith-

mically periodic antenna structures.’? The characteristics

of such structures were known in 1958 and the structures

themselves are described. But the paper, by its own state-

ment, proves that ‘‘no theory has been established which

even predicts the types of structures which will give fre-

quency independent operation. ** * Thus, it is felt that a

theoretical investigation of this class of antennas would be

fruitful.”’ It cannot be said that this article taught a

method for designing log-periodic antennas which would

predictably operate with frequency independence, and the

Isbell patent was not obvious after its publication.

Much evidence in the record established that the design

of successful log-periodic antennas was recognized by the

art itself to be unpredictable. In brief, the design of such

antennas at the time of the Isbell invention (and indeed

even now) was a challenge to the inventor. Isbell’s success

was unpredicted and, the court finds non-obvious to other

persons skilled in the art. In order to defeat a meritorious

patent it is not enough ‘‘to pick out isolated features”’ in

the prior art, ‘‘combine them in one particular way with

hindsight acquired only from the patent under attack, and

then say that no invention would have been involved in

selecting those particular features and combining them in

the particular way in which the patentee did.”” Eversharp,

Inc. v. Fisher Pen Co., Inc., 204 F. Supp. 649, 662-63 (N. D.

Til. 1961.) ‘

As for the ‘‘secondary considerations’’ of obviousness

or nonobviousness, such as ‘‘commercial success, long felt

but unsolved needs, failure of others, etc.’’ this court’s

conclusion is bolstered still more. Dr. DuHamel, among

others, attempted to construct an antenna with the char-

acteristics exhibited by Isbell’s and failed. When ap-

prised of it, DuHamet was surprised to learn that such

a structure worked. There can scarcely be more convinc-

ing proof that Isbell’s invention met a ‘“‘long felt but

unsolved need’’ in the antenna industry.

Apart from raising the question of obviousness, Blonder-

Tongue challenges the validity of the Isbell patent on

other grounds. First, it claims that the invention was

not novel because it was anticipated by the K. O. antenna

and the DuHamel et al. patent, No. 3,079,602. For the

reasons described above, in the court’s discussion of the

lack of obviousness, even in view of the K. O. antenna,

the court concludes that Isbell’s invention was similarly

not anticipated by the K. O. antenna. The DuHamel et al.

patent, filed March 14, 1958 and patented February 26,

1963, also does not anticipate the Isbell patent. It teaches

a logarithmically periodic rod antenna, which is significantly

different from a log-periodic antenna consisting of a

dipole array, different enough so that DuHamel himself

was astonished to learn of the success of the Isbell

invention.

Blonder-Tongue also charges that the Isbell antenna was

disclosed in a printed publication more than one year

prior to the filing of Isbell’s application. This question

pated Isbell’s invention if it had been published at a suf-

ficiently early date,’’ but argues that there is no

competent evidence that the report was in fact published

more than one year prior to the date of the application

for patent,’’ which would negate patentability under 35

U.S. C. $102. The application for the Isbell patent was

filed on May 3, 1960. Hence it becomes crucial to know

the date of ‘‘publication’’ of the quarterly report, which

the plaintiff concedes describes the invention sufficiently

to come within the meaning of the statute. The plaintiff

acknowledges that the report

cally available prior to May 3, 1959, but denies that it

was ‘‘published’’ earlier than May 5, 1959, on which date

the report was mailed to those persons on the distribution

list.

The evidence which tends to support the defendant’s

position on the question of publication is the testimony of

Miss Marjorie Johnson in the Winegard trial, of record in

this case by stipulation. Miss Johnson, whose formal posi-

tion with the University of Illinois in 1959 was Technical

Editor of the Electrical Engineering Research Department,

was responsible for distributing Electrical Engineering

Laboratory publications, such as the quarterly reports.

As part of her duties, Miss Johnson also kept copies

of such publications in a ‘‘library”’ of sorts, where,

because there were no supervisory personnel, materials

were kept in locked cabinets and were generally obtained

by request from a member of the publications staff having

a key. Miss Johnson testified that the quarterly report

involved here was in the publications office on April 30,

1959, and was therefore ‘‘available for distribution upon

request on that date,”’ although they were not actually

distributed to persons on the distribution list until May 5,

1959. If Miss Johnson were truly a librarian and the docu-

ment had been available in a genuine library, even a very

small or a highly specialized library, this court would be

compelled by the weight of authority to hold that such

availability constituted ‘‘publication”’ within the meaning

of §102. See, eg., Hamilton Laboratories, Inc. v. Mas-

sengill, 111 F. 2c 584 (6th Cir. 1940). However, the court

finds the nature of the availability of the document in this

ease was not sufficiently ‘‘public’’ in nature to constitute

the kind of publication intended by the act, at least until

the report was distributed on May 5, 1959. In my view,

the document had merely arrived from the printer and had

come into the possession of the publications office on April

30, 1959, and although there existed the rather remote

possibility that a person knowing of the report might have

asked for it and obtained a copy of it on that date, this

kind of availability did not represent ‘‘publication.’’

B. The Mayes et al. Patent.

The defendant claims that the Mayes et al. patent is

obvious in view of Isbell’s prior work and the Carter

patent, No. 1,974,387. The Mayes et al. patent represents

an improvement over the Isbell patent in that its dipoles

are inclined or V’d, permitting the antenna to be operated

over much higher bands of frequency and with increased

directivity, increasing the effective frequency range. The

dipole elements are bent forward at an angle between 50

and 150 degrees, rather than being attached perpendicu-

larly, as in the Isbell patent. The Carter patent teaches

an antenna ‘‘comprising a pair of angularly disposed

linear conductors,”’ but it can hardly be said to teach the

considerably more spohisticated Mayes et al. invention.

It must be noted here, as observed heretofore with respect

to the Isbell invention, that predictions in the field of

electronics and particularly in the field of antenna design

are undependable. There was no obvious basis for one

skilled in the art to take the isolated features shown in

the two earlier patents and to combine them as Mayes and

Carrel did. Their invention was, the court concludes not

obvious.

The two final challenges to the Mayes et al. patent are

(1) that it was not conceived by Mayes and Carrel but

by another, and (2) that it was secured by a fraud upon

the Patent Office. The first contention is based upon Dr.

Mayes’ ‘‘admission”’ on cross-examination that the V-con-

struction which constitutes the only structural difference

between his patent and the Isbell patent ‘‘was suggested

to him by Mr. Turner of Wright Air Development Cen-

ter.’’ But, a mere suggestion by another is not enough

to constitute anticipation sufficient to negate novelty.

‘‘The mere mental conception of the desirability of doing

something and of the means of doing it will not amount

to anticipation. An invention is not anticipated by mere

surmises or theories or by inferences as distinguished

from disclosures.’’ 1 Deller’s Walker on Patents (2d ed.)

§68. Turner’s suggestion in this instance was not an

‘tinvention’’ and did not anticipate the Mayes and Carrel

invention. The second contention is, in brief, that the

plaintiff’s procuring of the Mayes and Carrel patent was

‘“‘effected by an entirely misleading affidavit, either pre-

pared willfully or through gross and wanton neglect,

perpetrating a fraud on the Patent Office.’’ The defend-

ant makes the further argument that none of the condi-

tions required by law for the granting of a reissue patent

obtained in this case. The evidence supports neither of

these charges. First, the evidence does not show that

Mayes et al. misrepresented any fact to the Patent Office

during the prosecution of the patent. Second, Mayes et al.

were under no obligation to disclose their knowledge of

references, other than those which disclose the identical

invention. Wen Products, Inc. v. Portable Electric Tools,

Inc., 367 F. 2d 764, 767 (7th Cir. 1966).

In conclusion, the court finds both the Isbell and the

Mayes et al. patents valid and enforceable patents.

INFRINGEMENT OF THE PATENTS.

The log-periodic antennas sold by the defendant which

are asserted to infringe the plaintiff’s patent are anten-

nas of two series. The first are in the Golden series, con-

sisting of the Golden Dart and Golden Arrow television

antennas, the former the outdoor, the latter the indoor

models. These are UHF antennas, designed to receive

television signals transmitted by channels 14 through 83,

and are charged with infringing all of the claims of the

Isbell patent. It was stipulated by the parties that if the

representative antenna, Plaintiff’s Exhibit #10, was

found to infringe, the other member of the series also

infringed. The second series is the Color Ranger series,

consisting of the Color Ranger-3, Color Ranger-5, Color

Ranger-7, Color Ranger-10, and Color Ranger-15. These

are VHF antennas, designed to receive signals transmitted

by stations 2 through 13, and are asserted to infringe

claims 1 through 5 of the Isbell patent and all of the

claims of the Mayes et al. patent The representative

antenna is Plaintiff’s Exhibit #35. It was stipulated by

the parties that if it was found to infringe, all other mem-

bers of the series also infringed.

The court finds that the Isbell patent is basic to both

series of Blonder-Tongue’s antennas. All of its claims are

infringed by the Golden series, while claims 1 through 5

are infringed by the Color Ranger series. The Color

Ranger also infringes all of the claims of the Mayes et al.

patent. The court finds that the length of the dipoles and

the spacings between adjacent dipoles in the accused

Blonder-Tongue antennas follow the log-periodic arrange-

ment disclosed and claimed in the patents in suit. Each of

the antennas contains three or more parallel dipoles which

vary progressively in length and spacing in accordance

with a substantially constant scale factor. The scale factor

for length is literally constant, in the Golden series, and

the average variation from a constant scale factor for

spacing is plus or minus 6%. In the Color Ranger series,

the seale factor is literally constant for both length and

spacing. The separation in the planar arrangement is

one-eighteenth wavelength or less for both series. Although

the broader the bandwidth desired, the closer an antenna

must conform to the preferred construction of the Isbell

antenna, where broadband requirements are not exces-

sively great (and this is true for many practical applica-

tions), satisfactory operation can be obtained with an

Isbell antenna whose dipole elements are not arranged in

a strictly planar arrangement but are separated by a small

fraction of a wavelength. The Blonder-Tongue antennas’

dipole elements are separated by not more than one-

eighteenth wavelength, making them substantially coplanar.

In addition, each of the dipoles is connected by a two-

conductor feeder, the conductors of which have the effect

of alternately connecting the opposite dipole element of

successive dipoles.

Buionper-J'oNGUE’s COUNTERCLAIM.

The counterclaim filed by Blonder-Tongue against the

Foundation and JFD contains three counts. The first two

counts charge unfair competition and violations of the

antitrust laws; the third charges infringement of Blonder-

Tongue’s own patent, No. 3,259,904, issued July 5, 1966, to

Isaac S. Blonder and Abraham Schenfeld.

Unratrr ComMPETITION AND ANTITRUST VIOLATIONS.

Blonder-Tongue’s first claim of unfair competition and

antitrust violations by the counterclaim defendants is its

charge against the advertising campaign utilized by JFD,

as licensee under the Foundation’s patents, to sell the an-

tennas it produced pursuant to the licensing agreement.

Blonder-Tongue describes some of the language employed

in JFD advertisements as unfair, but the Court finds that

it was within the range of acceptable sales efforts and was

not so offensive as to be characterized as ‘‘unfair.’’ For

example, JF'D’s use of the phrase, ‘‘developed by the an-

tenna research laboratories of the University of Ilinois,’’

in connection with its product does not violate this court’s

notions of what is fair competition in a highly competitive

——

world. The fair import of this phrase is that the JFD an-

tennas were initially developed by persons at the Univer-

sity, and the factual basis for such a statement is not dis-

puted. The advertisements invariably added that the an-

tennas were adapted for home television used by JFD;

this statement is also correct. The advertising effort repre-

sented by these statements and others like them cannot be

deemed ‘‘unfair.’? See Drop Dead Co., Inc. v. S. C. John-

son & Son., Inc., 326 F. 2d 87, 96 (9th Cir. 1963), cert. de-

nied, 377 U. S. 907 (1964).

Likewise, the alleged ‘‘mismarking’’ of antennas and ad-

vertisements with representations of patent coverage for

the JFD antennas which Blonder-Tongue asserts was mis-

leading was not shown by the evidence to be either de-

liberate or of damaging effect. Its effect, if any, was min-

imal. There was no convincing evidence to support the

conclusion that potential purchasers were influenced by

such markings to buy or not to buy either JFD’s or its

] competitors’ antennas, or that such markings were delib-

erately intended to gain an unfair advantage over JFD’s

competition. S. W. Farber, Inc. v. Texas Instruments, Inc.,

’ 230 F. Supp. 883, 892 (D. Del. 1964), aff’d, 344 F. 2d 957

7 (3d Cir. 1965), cert. denied, 382 U. S. 843 (1965).

Nor was the use of the phrase ‘‘the patented log-periodic

cellular formula’’ unfair. JFD maintains that it referred

to the antenna itself, a log-periodic antenna using the pat-

ented cellular concept. This is a reasonable construction

of the phrase; the reader was not necessarily led to be-

lieve that JFD had patented the whole concept of log-

periodicity. The court’s conclusion is that JFD’s advertis-

ing was not improper. The defendant is entitled neither

to an injunction to halt allegedly unfair advertising prac-

tices nor to damages resulting from a loss of business

allegedly attributable to such practices, since the evidence

supports neither claim.

Blonder-Tongue further contends that the counter-claim

defendants, particularly the Foundation, undertook an

unfair campaign to police its patents by numerous law-

suits and threats of litigation. It is conceded by Blonder-

Tongue, as it must be, that there is nothing improper in

bringing lawsuits against those believed in good faith to

be infringers. But Blonder-Tongue’s complaint is that suits

were brought ‘‘to coerce the trade into dealing with JFD

exclusively,’’ that news releases concerning this litigation

were ‘‘deliberately widely circulated in the trade,’’ and

that such practices ‘‘far transcend the proper use of pat-

ents and patent litigation.’’ A review of the evidence dem-

onstrates clearly that such allegations are wholly without

basis in fact. The patentee, in the belief that its patents

were valid and infringed (as they have indeed been shown

to be), had the right to protect its claims by notifying the

trade of alleged infringements. Its activities here were

not unreasonable. Al-Fab Aluminum Fabricators, Inc. v.

Wagner, 220 F. Supp. 715 (N. D. Til. 1963). The argument

that it was improper to sue Blonder-Tongue in this Dis-

trict is irrelevant to the claim of unfair practices made

here. Blonder-Tongue might have brought timely objec-

tion to the venue but chose no to do so, and this court has

not, in any case, been shown how the choice of venue has

worked to Blonder-Tongue’s competitive disadvantage.

Even if suit had been brought in Blonder-Tongue’s home

state of New Jersey, news releases describing the litigation

might have been distributed anywhere, including this Dis-

trict. From the standpoint of competition, therefore, it is

immaterial that Blonder-Tongue was sued here rather than

in any other District.

The claim that the Mayes et al. patent was procured im-

properly from the Patent Office has been discussed supra

as part of the court’s discussion of the patent’s validity.

There was no evidence that its procurement constituted un-

fair competition, as charged by Blonder-Tongue.

Blonder-Tongue makes the further claim that JFD

‘raided’? key personnel from Blonder-Tongue, and that

this constituted an unfair competitive practice. The record

shows that several persons formerly in Blonder-Tongue’s

employ were subsequently hired by JFD and that, after the

departure of one of these, some records dealing with cus-

tomers were found to be missing. If the court were free to

speculate on the significance of this evidence, it might be

tempted to conclude, with Blonder-Tongue, that that com-

pany had been (in popular parlance) ‘‘raided’’ by JFD.

But more than mere speculation is required to justify such

a conclusion. There must be proof, and such proof is lack-

ing here. Those employees later hired by JFD made up a

small fraction of the total number of employees who left

Blonder-Tongue during the same period of time, and a

number of reasons, such as dissatisfaction with Blonder-

Tongue, genuinely arrived at, appear from the evidence to

have been instrumental in causing the employees to change

their positions. The record contains no evidence that JFD

‘¢raided’’ Blonder-Tongue. Dempster Bros. Inc. v. Perfec-

tion Steel Body Co., 182 F. Supp. 307, 309 (N. D. Ohio

1959).

Blonder-Tongue has also argued that JFD attempted to

force its customers to purchase its unpatented products as

a ‘‘tie-in’’ with its patented products. Proof of such a

practice would constitute, of course, an antitrust violation

as well as an unfair competitive practice. Carbice Corp. of

America v. American Patents Development Corp., 283 U. 8S.

27 (1931). The only evidence, however, which tends to sup-

port this argument is the testimony of a JFD official who

admitted that JFD salesmen would try to persuade their

customers to handle not only JFD antennas but its other

products as well. This is a normal business practice: all

salesmen try to sell their entire line of merchandise rather

than merely their most popular products. There was no

probative evidence here of any coercion or threats made to

customers to force their purchase of the entire JFD line.

Only proof of such a compulsory tie-in would permit the

court to find either an unfair competitive practice or a vio-

lation of the antitrust laws, and such proof is absent in

the record.

The court concludes that JFD was not guilty of any

wrongful practices with regard to the marketing and sales

of their antennas. The role of the Foundation in the ac-

tivities characterized by Blonder-Tongue as unfair and in

violation of the antitrust laws is, on this view of the evi-

dence, immaterial. Whether the Foundation was a ‘‘mere

licensor’’ or something more than that is of no importance

since the accused practices are not found to be beyond the

reasonable bounds of competition.

INFRINGEMENT OF BLONDER-TonGUE’s PATENT.

The third count of Blonder-Tongue’s counterclaim

charges that Claim 5 of the patent held by Blonder-Tongue,

the Blonder et al. patent No. 3,259,904, has been infringed

by the counterclaim defendants. The antenna of Claim 5

comprises a pair of parallel conductors (twin booms)

spaced apart vertically in a verticle plane. Dipole ele-

ments lying in vertically-spaced horizontal planes extend

from the conductors at successive points along the lengths

of the conductors, with dipole lengths increasing gradually

from one end of the conductors to the other, the shortest

dipoles at the front end of the conductors, where terminals

connect a parallel wire transmission line to the antenna.

Rigid insulating means, maintaining the terminals spaced

apart, are connected with a strain relief or standoff for

supporting the transmission line near the front end. Fur-

ther rigid insulating means maintain the conductors’ spac-

ing at a region remote from the front end. The vertical

distance between conductors is less than the distance be-

EE rae

tween successive dipole elements and less than the wave-

lengths of the frequency band of the antenna’s operation.

The court finds that Claim 5 of the Blonder-Tongue pat-

tent was obvious at the time it was made and is therefore

invalid. The alleged improvement was taught by the fol-

lowing references in the prior art:

1. Technical Report No. 52, published October 1, 1961,

entitled ‘‘Analysis and Design of the Log-Periodic An-

tenna,’’ by Robert L. Carrel;

2. the Mayes and Heslin antennas;

3. the prior art patents cited by the Patent Examiner

during prosecution of the application for the Blonder-

Tongue patent and the Kane, Wickersham et al., Valach,

Gross, Winegard, and Callaghan patents.

Cuamms FoR ATTORNEYS’ F£Es.

The plaintiff and the counterclaim defendant have each

moved for an award of attorneys’ fees in their favor, based

upon their claims that the counterclaim was interposed

and prosecuted against them in bad faith. The Founda-

tion’s claim is based upon 35 U.S. C. § 285, which reads:

The court in exceptional cases may award reasonable

_ attorney fees to the prevailing party.

JFD’s claim is based upon ‘‘principles of equity and good

practice.’’

Both claims will be denied. The statutory provision, as

well as equity, permits such an award only where extraor-

dinary circumstances exist and it is clear to the court

that a gross injustice will be done unless such an award

is made. Siebring v. Hansen, 346 F. 2d 474 (8th Cir.

1965), cert. denied, 382 U. S. 943. I do not find that

Blonder-Tongue’s counterclaim was so vexatious and so

unjustified as to make it an ‘‘exceptional case’’ within the

ambit to the statute or within the dictates of equity.

Hyster Co. v. Hunt Foods, Inc., 263 F. 2d 130, 134 (7th

Cir. 1959). Although the court has not held that the coun-

terclaim was legally proved in any respect, Blonder-Tongue

was not clearly acting in bad faith in bringing it before

this court.

This memorandum of decision will stand as the Court’s

findings of fact and conclusions of law within the meaning

of Rule 52 of the Federal Rules of Civil Procedure.

In tHe Unitep States District Court.

(Title Omitted in Printing.)

JUDGMENT ORDER.

This cause having come on to be heard on plaintiff’s

Amended Complaint, on defendant’s Amended Answer and

Counterclaim, and on plaintiff’s and counterclaim defend-

ant’s Reply to Amended Counterclaim and the Court hav-

ing heard the testimony of the Witnesses for the respective

parties in open court and having examined the depositions

made of record, the exhibits received in evidence and the

briefs of the respective parties, and the Court having this

day filed its Memorandum of Decision which said Memoran-

dum of Decision stands as the Court’s Findings of Fact

and Conclusions of Law within the meaning of Rule 52 of

the Federal Rules of Civil Procedure,

It Is Hereby Ordered, Adjudged and Decreed as follows:

1. The Court has jurisdiction of the parties and of the

subject matter of this action.

2. The plaintiff, University of Illinois Foundation, is

the owner of United States Letters Patent No. 3,210,767,

and Reissue Patent No. 25,740, and all rights thereunder,

including the rights of recovery for past infringements.

3. United States Letters Patent No. 3,210,767 and Re-

issue Patent No. 25,740 are valid and subsisting at law

and enforceable.

4, The defendant, Blonder-Tongue Laboratories, Inc.,

has infringed said Patents by making or causing to be

made or sold antennas covered by the Claims of said Pat-

ents.

5. Judgment on the Amended Complaint is entered for

the plaintiff with prejudice.

6. The defendant is the owner of United States Letters

Patent No. 3,259,904 and all rights thereunder.

7. Claim 5 of United States Letters Patent No. 3,259,-

904 is invalid and void in law.

8. The plaintiff and the counterclaim defendant, JFD

Electronics Corporation, did not commit acts of unfair

competition or acts in violation of the antitrust laws as

charged in the Counterclaim.

9. Judgment on the Counterclaim filed by the defendant

is entered for the plaintiff and the counterclaim defendant

with prejudice.

10. A p.~petual injunction shall issue out of and under

the seal of this Court directed to the defendant, Blonder-

Tongue Laboratories, Inc., their respective officers, agents,

servants, attorneys, employees, associates and privies and

those persons in active concert and participation with them

or any of them, enjoining and restricting them and each of

them from directly or indirectly infringing United States

Letters Patent No. 3,210,767 and Reissue Patent No. 25,740

and from offering or advertising so to do, and from aiding

or abetting or in any way contributing to the infringement

of any of said Claims.

11. After this decree shall have become final, the Court

shall refer the matter to a Master, to be appointed by the

Court, to make and render an accounting as to the extent

of the manufacture and sale of infringing antennas by the

defendant, and as to the amount of damages suffered by

the plaintiff by reason of the defendant’s infringement of

United States Letters Patent No. 3,210,767 and Reissue

Patent No. 25,740; and that plaintiff recover from the de-

fendant the amount of these damages.

12. The said defendant and its officers, directors, at-

torneys, servants, agents, workmen and employees are

hereby directed and required to attend before such Master,

from time to time as required and to produce such relevant

apparatus, objects, books, documents and papers as re-

quested and to submit to examination, oral or otherwise.

13. The plaintiff shall not recover its expenses, costs

or attorneys’ fees.

14. The defendant shall not recover its expenses, costs

or attorneys’ fees.

15. The counterclaim defendant shall not recover iis

expenses, costs or attorneys’ fees.

Enter:

Julius J. Hoffman,

United States District Judge.

Dated: June 27, 1968.

University of Illinois Foundation,

Appellant,

vs.

Winegard Company,

Appellee.

No. 19000.

Unitep States Court or ApPgALs,

Kighth Circuit.

Sept. 30, 1968.

Rehearing Denied Nov. 5, 1968.

Certiorari Denied March 24, 1969.

Before Matrues, Menarry and Lay, Circuit Judges.

Lay, Circuit Judge.

The plaintiff, the University of Dlinois Foundation, ap-

peals from a judgment below denying patent validity to

its United States Letters Patent No. 3,210,767, relating

to a ‘‘frequency independent unidirectional antenna.’’ The

plaintiff is the owner by assignment from one Dwight E.

Isbell. For facility of discussion we refer to the patent

itself as the ‘‘Isbell Patent.’’ Suit was brought against

the defendant Winegard Company for alleged infringement.

Trial was held before the Honorable Roy L. Stephenson,

Chief Judge of the Southern District of Iowa. Judge

Stephenson held that the subject matter of the patent did

not rise to the level of patentability and dismissed plain-

tiff’s suit. See University of Illinois Foundation v. Wine-

gard Co., 271 F. Supp. 412 (S. D. Iowa 1967).

. _* oo assignor filed his application for patent on May

The Isbell Patent claims a high quality tele

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