Blonder Tongue v. University of Illinois Found.
402 U.S. 313 (1971)

Annotate this Case

U.S. Supreme Court

Blonder Tongue v. University of Illinois Found., 402 U.S. 313 (1971)

Blonder Tongue Laboratories, Inc. v.

University of Illinois Foundation

No. 338

Argued January 14, 1971

Decided May 3, 1971

402 U.S. 313

CERTIORARI TO THE UNITED STATE COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

Syllabus

This Court's holding in Triplett v. Lowell,297 U. S. 638, that a determination of patent invalidity is not res judicata against the patentee in subsequent litigation against a different defendant overruled to the extent that it forecloses an estoppel plea by one facing a charge of infringement of a patent that has once been declared invalid, and in this infringement suit, where, because of Triplett, petitioner did not plead estoppel and the patentee had no opportunity to challenge the appropriateness of such a plea, the parties should be allowed to amend their pleadings and introduce evidence on the estoppel issue. Pp. 402 U. S. 317-350.

422 F.2d 769, vacated and remanded.

WHITE, J., delivered the opinion for a unanimous Court.

Page 402 U. S. 314

MR. JUSTICE WHITE delivered the opinion of the Court.

Respondent University of Illinois Foundation (hereafter Foundation) is the owner by assignment of U.S. Patent No. 3,210,767, issued to Dwight E. Isbell on October 5, 1965. The patent is for "Frequency Independent Unidirectional Antennas," and Isbell first filed his application May 3, 1960. The antennas covered are designed for transmission and reception of electromagnetic radio frequency signals used in many types of communications, including the broadcasting of radio and television signals.

The patent has been much litigated since it was granted, primarily because it claims a high quality television antenna for color reception. [Footnote 1] One of the first infringement suits brought by the Foundation was filed in the Southern District of Iowa against the Winegard Co., an antenna manufacturer. [Footnote 2] Trial was to the court, and, after pursuing the inquiry mandated by Graham v. John Deere Co.,383 U. S. 1, 383 U. S. 17-18 (1966), Chief Judge Stephenson held the patent invalid, since

"it would have been obvious to one ordinarily skilled in the art and wishing to design a frequency independent unidirectional

Page 402 U. S. 315

antenna to combine these three old elements, all suggested by the prior art references previously discussed."

University of Illinois Foundation v. Winegard Co., 271 F.Supp. 412, 419 (SD Iowa 1967) (footnote omitted). [Footnote 3] Accordingly, he entered judgment for the alleged infringer and against the patentee. On appeal, the Court of Appeals for the Eighth Circuit unanimously affirmed Judge Stephenson. 402 F.2d 125 (1968). We denied the patentee's petition for certiorari. 394 U.S. 917 (1969).

In March, 1966, well before Judge Stephenson had ruled in the Winegard case, the Foundation also filed suit in the Northern District of Illinois charging a Chicago customer of petitioner, Blonder-Tongue Laboratories, Inc. (hereafter B-T), with infringing two patents it owned by assignment: the Isbell patent and U.S. Patent No. Re. 25,740, reissued March 9, 1965, to P. E. Mayes et al. The Mayes patent was entitled "Log Periodic Backward Wave Antenna Array," and was, as indicated, a reissue of No. 3,108,280, applied for on September 30, 1960. B-T chose to subject itself to the jurisdiction of the court to

Page 402 U. S. 316

defend its customer, and it filed an answer and counterclaim against the Foundation and its licensee, respondent JFD Electronics Corp., charging: (1) that both the Isbell and Mayes patents were invalid; (2) that, if those patents were valid, the B-T antennas did not infringe either of them; (3) that the Foundation and JFD were guilty of unfair competition; (4) that the Foundation and JFD had violated the "anti-trust laws of the United States, including the Sherman and Clayton Acts, as amended"; and (5) that certain JFD antenna models infringed B-T's patent No. 3,259,904, "Antenna Having Combined Support and Lead-In," issued July 5, 1966.

Trial was again to the court, and, on June 27, 1968, Judge Hoffman held that the Foundation's patents were valid and infringed, dismissed the unfair competition and antitrust charges, and found claim 5 of the B-T patent obvious and invalid. Before discussing the Isbell patent in detail, Judge Hoffman noted that it had been held invalid as obvious by Judge Stephenson in the Winegard litigation. He stated:

"This court is, of course, free to decide the case at bar on the basis of the evidence before it. Triplett v. Lowell,297 U. S. 638, 297 U. S. 642 (1936). Although a patent has been adjudged invalid in another patent infringement action against other defendants, patent owners cannot be deprived 'of the right to show, if they can, that, as against defendants who have not previously been in court, the patent is valid and infringed.' Aghnides v. Holden, 22[6] F.2d 949, 951 (7th Cir.1955). On the basis of the evidence before it, this court disagrees with the conclusion reached in the Winegard case and finds both the Isbell patent and the Mayes et al. patent valid and enforceable patents."

App. 73.

Page 402 U. S. 317

B-T appealed, and the Court of Appeals for the Seventh Circuit affirmed: (1) the findings that the Isbell patent was both valid and infringed by B-T's products; (2) the dismissal of B-T's unfair competition and antitrust counterclaims; and (3) the finding that claim 5 of the B-T patent was obvious. However, the Court of Appeals reversed the judgment insofar as Judge Hoffman had found the Mayes patent valid and enforceable, enjoined infringement thereof, and provided damages for such infringement. 422 F.2d 769 (1970).

B-T sought certiorari, assigning the conflict between the Courts of Appeals for the Seventh and Eighth Circuits as to the validity of the Isbell patent as a primary reason for granting the writ. [Footnote 4] We granted certiorari, 400 U.S. 864 (1970), and subsequently requested the parties to discuss the following additional issues not raised in the petition for review:

"1. Should the holding of Triplett v. Lowell,297 U. S. 638, that a determination of patent invalidity is not res judicata as against the patentee in subsequent litigation against a different defendant, be adhered to?"

"2. If not, does the determination of invalidity in the Winegard litigation bind the respondents in this case?"

In Triplett v. Lowell,297 U. S. 638 (1936), this Court held:

"Neither reason nor authority support the contention that an adjudication adverse to any or all the claims of a patent precludes another suit upon the same claims against a different defendant. While

Page 402 U. S. 318

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."

297 U.S. at 297 U. S. 642.

The holding in Triplett has been at least gently criticized by some judges. In its opinion in the instant case, the Court of Appeals for the Seventh Circuit recognized the Triplett rule, but nevertheless remarked that it

"would seem sound judicial policy that the adjudication of [the question of the Isbell patent's validity] 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."

422 F.2d at 772. [Footnote 5]

Page 402 U. S. 319

In its brief here, the Foundation urges that the rule of Triplett be maintained. Petitioner B-T's brief took the same position, stating that,

"[t]hough petitioners stand to gain by any such result, we cannot urge the destruction of a long-accepted safeguard for patentees merely for the expediency of victory."

Brief for Petitioner 12. The Government, however, appearing as amicus curiae, urges that Triplett was based on uncritical acceptance of the doctrine of mutuality of estoppel, since limited significantly, and that the time has come to modify Triplett so that

"claims of estoppel in patent cases [are] considered on a case by case basis, giving due weight to any factors which would point to an unfair or anomalous result from their allowance."

Brief for the United States 7. The Government's position was spelled out in a brief filed more than a month after petitioner B-T filed its brief. At oral argument, the following colloquy occurred between the Court and counsel for B-T:

"Q. You're not asking for Triplett to be overruled?"

"A. No, I'm not. I maintain that my brother here did have a right if there was a genuine new issue or some other interpretation of the [patent] claim or some interpretation of law in another circuit that's different than this Circuit, he had a right to try, under Triplett below, in another circuit."

"In this particular case, where we're stuck with substantially the same documentary evidence, where we were not able to produce [in the Seventh Circuit] even that modicum of expert testimony that existed in the Eighth Circuit, we think there may be, as suggested by the Solicitor General, some reason for modification of that document [sic] in a case such as this."

Tr. of Oral Arg. 7-8.

Page 402 U. S. 320

In light of this change of attitude from the time petitioner's brief was filed, we consider that the question of modifying Triplett is properly before us. [Footnote 6]

II

Triplett v. Lowell exemplified the judge-made doctrine of mutuality of estoppel, ordaining that, unless both parties (or their privies) in a second action are bound by a judgment in a previous case, neither party (nor his privy) in the second action may use the prior judgment as determinative

Page 402 U. S. 321

of an issue in the second action. Triplett was decided in 1936. The opinion stated that "the rules of the common law applicable to successive litigations concerning the same subject matter" did not preclude "relitigation of the validity of a patent claim previously held invalid in a suit against a different defendant." 297 U.S. at 297 U. S. 644. In Bigelow v. Old Dominion Copper Co.,225 U. S. 111, 225 U. S. 127 (1912), the Court had stated that it was "a principle of general elementary law that the estoppel of a judgment must be mutual." [Footnote 7] The same

Page 402 U. S. 322

rule was reflected in the Restatement of Judgments. Restatement of Judgments § 93 (1942). [Footnote 8]

But even at the time Triplett was decided, and certainly by the time the Restatement was published, the mutuality rule had been under fire. Courts had discarded the requirement of mutuality and held that only the party against whom the plea of estoppel was asserted had to have been in privity with a party in the prior action. [Footnote 9] As Judge Friendly has noted, Bentham had attacked

Page 402 U. S. 323

the doctrine

"as destitute of any semblance of reason, and as 'a maxim which one would suppose to have found its way from the gaming table to the bench.' . . ."

Zdanok v. Glidden Co., 327 F.2d 944, 954 (CA2 1964), cert. denied, 377 U.S. 934 (1964) (quoting 3 J. Bentham, Rationale of Judicial Evidence 579 (1827), reprinted in 7 Works of Jeremy Bentham 171 (J. Bowring ed. 1843)). There was also ferment in scholarly quarters. [Footnote 10]

Building upon the authority cited above, the California Supreme Court, in Bernhard v. Bank of America Nat. Trust & Savings Assn., 19 Cal.2d 807, 122 P.2d 892 (1942), unanimously rejected the doctrine of mutuality, stating that there was

"no compelling reason . . . for requiring that the party asserting the plea of res judicata must have been a party, or in privity with a party, to the earlier litigation."

Id. at 812, 122 P.2d at 894. Justice Traynor's opinion, handed down the same year the Restatement was published, listed criteria since employed by many courts in many contexts:

"In determining the validity of a plea of res judicata three questions are pertinent: was the issue decided in the prior adjudication identical with the one presented in the action in question? Was there a final judgment on the merits? Was the party against whom the plea is asserted a party or in

Page 402 U. S. 324

privity with a party to the prior adjudication?"

19 Cal.2d at 813, 122 P.2d at 895. Although the force of the mutuality rule had been diminished by exceptions and Bernhard itself might easily have been brought within one of the established exceptions, "Justice Traynor chose instead to extirpate the mutuality requirement and put it to the torch." Currie, Civil Procedure: The Tempest Brews, 53 Calif.L.Rev. 25, 26 (1965).

Bernhard had significant impact. Many state and federal courts rejected the mutuality requirement, especially where the prior judgment was invoked defensively in a second action against a plaintiff bringing suit on an issue he litigated and lost as plaintiff in a prior action. [Footnote 11] The trend has been apparent in federal question cases. [Footnote 12] The federal courts found Bernhard persuasive. As Judge Hastie stated more than 20 years ago:

"This second effort to prove negligence is comprehended by the generally accepted precept that a party who has had one fair and full opportunity to prove a claim and has failed in that effort should not be permitted to go to trial on the merits of that claim a second time. Both orderliness and reasonable time saving in judicial administration require that

Page 402 U. S. 325

this be so unless some overriding consideration of fairness to a litigant dictates a different result in the circumstances of a particular case."

"The countervailing consideration urged here is lack of mutuality of estoppel. In the present suit, [the plaintiff] would not have been permitted to take advantage of an earlier affirmative finding of negligence, had such finding been made in [his first suit against a different defendant]. For that reason he argues that he should not be bound by a contrary finding in that case. But a finding of negligence in the [plaintiff's first suit] would not have been binding against the [defendant in a second suit] because [that defendant] had no opportunity to contest the issue there. The finding of no negligence, on the other hand, was made after full opportunity to [plaintiff] on his own election to prove the very matter which he now urges a second time. Thus, no unfairness results here from estoppel which is not mutual. In reality, the argument of [plaintiff] is merely that the application of res judicata in this case makes the law asymmetrical. But the achievement of substantial justice, rather than symmetry, is the measure of the fairness of the rules of res judicata."

Bruszewski v. United States, 181 F.2d 419, 421 (CA3 1950), cert. denied, 340 U.S. 865 (1950). Many federal courts, exercising both federal question and diversity jurisdiction, are in accord unless in a diversity case bound to apply a conflicting state rule requiring mutuality. [Footnote 13]

Page 402 U. S. 326

Of course, transformation of estoppel law was neither instantaneous nor universal. As late as 1961, eminent authority stated that

"[m]ost state courts recognize and apply the doctrine of mutuality, subject to certain exceptions. . . . And the same is true of federal courts, when free to apply their own doctrine."

Moore & Currier, Mutuality and Conclusiveness of Judgments, 35 Tul.L.Rev. 301, 304 (1961) (footnotes omitted); see also, 1B J. Moore, Federal Practice

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