# Appendix — Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386413_0277%3A01 ## Record - **Collection:** Supreme Court brief - **Document type:** Appendix - **Published:** January 1, 1971 - **Citation:** 402 U.S. 313 ## Text 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 ii 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 iv 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 6/16/66 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, J. 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 33 7/ 5/66 8/11/66 8/25/66 9/ 1/66 9/ 7/66 9/ 7/66 9/ 7/66 9/23/66 9/22/66 10/20/66 11/ 1/66 2 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 1/24/67 1/30/67 1/31/67 2/ 3/67 2/ 3/67 2/ 3/67 3 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 3/31/67 4/17/67 4/27/67 4/27/67 5/ 1/67 4 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 5 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, J. 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 9/11/67 10/23/67 10/23/67 12/18/67 12/20/67 12/26/67 12/27/67 12/26/67 12/26/67 12/27/67 12/27/67 6 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/ 3/68 1/ 4/68 1/ 5/68 1/ 8/68 1/ 9/68 1/10/68 1/11/68 1/12/68 1/12/68 1/12/68 7 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, J. 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 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/ 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. 10 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, il 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. 12 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. 13 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. 14 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. 15 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. (c) Conspiring to join and joining forces in a nation- 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 16 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 17 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 20 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 21 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 23 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. 35 50 70 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 4 ’ jing conductive exicnsions of said conductors mechanical- 10 15 ‘ 35 50 55 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 27 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 31 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 33 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. vs 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. a 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 ie ie c& vs g & rs, i. = Ws ” A & 5 4 41 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 x hs XY i 3 ee 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. 44 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 45 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. 46 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. 47 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. 4s 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 49 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. 50 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. 51 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. 52 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.) 54 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. aetapl i. ager - as La. Ba HE Sit APY Se pata ees NOR array Ppa. e 1) Scale A SW Ee aoa BAR Asts he ——— rr — —~—™ 55 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 He x &. * * > 57 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 designed by one using the log-periodic design principle, it 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. 61 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. 62 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. 64 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. 65 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. 67 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- 70 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 71 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 72 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 d [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386413_0277%3A01. Public record. Not legal advice.