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>> Warren E. Burger: -- arguments next number 338, Blonder-Tongue Laboratories against the
University of Illinois Foundation. Mr. Rines, you may proceed whenever you're
ready. >> Robert H. Rines: Mr. Chief Justice and
may it please the Court. To take one moment to introduce my father,
teacher, and partner Mr. David Rines, my co-counsel from Chicago, Mr. Richard Phillips.
This case involves a conflict of decisions between the Eighth Circuit and the Seventh
Circuit with regard to the validity of a patent to Isbell dealing with television antennas,
the type that I'm sure, Your Honors have seen cluttering our landscape on the roofs of houses
which are very necessary in order to get good television reception in the homes.
I have here typical antenna of the type I'm sure youve seen on the roofs, involving what
we call dipoles, nothing magical about that, just little rods which are tuned and corrected
in terms to dimensions and direction to receive from the television transmitting stations
the signals that we tune into our television. In the Eighth Circuit, both the District Court
and the Court of Appeals found the Isbell patent which is owned by the University of
Illinois Foundation to be invalid for obviousness in the light of the teaching of the prior
art. The University of Illinois Foundation filed
not just one suit, in the Winegard case which is at Eighth Circuit case, but filed the suit
against Blonder-Tongue, a New Jersey Corporation in Chicago by suing a customer and joining
Blonder-Tongue and a whole host of other manufacturers throughout the land.
When a decision went against them in the Winegard District Court and while they were appealing
to the Court of Appeals of the Eighth Circuit, the University of Illinois Foundation pursued
the suit against Blonder-Tongue in New Jersey, on exactly the same patent, there was also
another patent involved and we went to trial before a Judge Hoffman.
One of the issues in our presentation is the fact that we were forced to this trial without
the benefit of a single witness during the whole presentation of the University of Illinois'
case in-chief. As a result of the fact that when we were
ready in December 18th, the trial date with our Cambridge, Massachusetts expert whod worked
over a year on this with us, with Mr. Blonder, and various customer witnesses from all over
the country and myself in Boston, the judge could not hear it on the 18th and he couldnt
set a time for postponement, 19th, 20th and 21st, we still didnt have a trial date.
The result was that the day before Christmas the trial was set for two days after Christmas
and I was not able to reassemble any of my witnesses and the District Court refused to
give me a few days in which to this but forced us to go to trial without any witnesses at
all. Therefore, we were not able to produce any
live witnesses on the issue of whether or not the Isbell patent was or was not valid
for our business or any other reason. >> Potter Stewart: The trial had originally
been set in October or November, hadn't it? >> Robert H. Rines: It had been set several
times, but then was postponed Mr. Justice Potter, until December 18th.
>> Potter Stewart: What caused the postponement? >> Robert H. Rines: The prior trial of Judge
Hoffman had not been finished. >> Potter Stewart: I beg your pardon.
>> Robert H. Rines: A prior trial of the District Court had had not been finished, so it was
postponed to December 18th. >> Potter Stewart: Just one continuance?
>> Robert H. Rines: Oh! No, there were several during, at the request
of the parties, at the request of the court, this is about six or seven postponement, but
were all zero it in for December 18th, we were all there.
Therefore, the record that has been produced in this case is only the documents that we
were able to put in before Judge Hoffman which were the same documents before the District
Court in the Eighth Circuit litigation, the Winegard litigation and we had to argue therefore
from those documents without the benefit of any expert or any witnesses at all, these
issues of obviousness and validity. >> Byron R. White: How about in the Eighth
Circuit, had you had oral testimony? >> Robert H. Rines: Yes, there was.
The other side, the defendant had a right and did produce an expert and the court --
>> Byron R. White: Did you? >> Robert H. Rines: Wasnt in that.
No, I'm a different defendant. >> Byron R. White: Thats alright.
Oh! Yes, the have defendant there did, yes.
>> Robert H. Rines: Yes he did sir. >> Byron R. White: Yes.
>> Robert H. Rines: So the issue squarely before this Court is who was right in terms
to this conclusion of obviousness on substantially the same record, the Court of Appeals of the
Eighth Circuit or the Court of Appeals of the Seventh Circuit?
And under the doctrine of Triplett v. Lowell, to which we will address ourselves also, if
you recall, when a conflict does arise because a patentee has a second bite of the pie, if
he loses in a First Circuit, the decision must rest with this Supreme Court as to whether
the patent is valid or invalid. >> Warren E. Burger: You said, thought that
on the same record was the District Court in the first case and Eighth Circuit dealing
with the same record as the record the second trial for Judge Hoffman?
>> Robert H. Rines: So far as the documents are concerned --
>> Warren E. Burger: Well, documents -- >> Robert H. Rines: Yes.
But he had more evidence in the Eighth Circuit because they have live witnesses and experts
which we were not able to produce before Judge Hoffman.
So, a fuller trial was held in the Eighth Circuit than we have in the Seventh Circuit.
>> Warren E. Burger: So that its not the same record in the broad sense of that word?
>> Robert H. Rines: No, it is not Mr. Chief Justice.
In addition, in -- >> John M. Harlan: But you're not asking for
Triplett to be overruled? >> Robert H. Rines: No, I'm not.
I maintain that my brother here did have a right if there was a genuine new issue or
some other interpretations of a claim or some interpretation of law in another circuit as
different in this circuit, he had a right to try under Triplett v. Lowell in another
circuit. But in this particular case where were stuck
with substantially the same documentary evidence, where we were not able to produce 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 doctrine in
a case such as this. The real question that is before this Court
is on the matter of obviousness at the time that Mr. Isbell made his invention, what was
the knowledge in the art? What was the skill of the ordinary mechanic?
What have been known? And we were very fortunate that one distinction
between these two trials was that the University of Illinois at this time in Blonder-Tongue
case chose to take in some prior investigators in this field namely Dr. DuHamel, who had
pioneered this kind of antenna at the University of Illinois many years before.
So he was produced as a plaintiffs witness and fortunately through cross-examination,
we were able to get from Mr. DuHamel, admissions that we think bolsters this concept of complete
and obviousness of this invention at the time that Mr. Isbell made it.
Now the district -- >> Harry A. Blackmun: Mr. Rines, I want to
be sure the so-called Mayes patent is not an issue now, here?
>> Robert H. Rines: It is not for the edification of the Court.
There were two patents sued on by the University of Illinois.
One was the Isbell patent, which is this kind of an antenna not this where these rods here
instead of being off at an angle, come out straight, thats Isbell.
Then they had a second patent the Mayes who just took these rods and bent them in this
way into a V. The District Court found both of those patents
valid. The Court of Appeals threw out the V patent
saying it wasnt invalid. So that's not an issue in the Supreme Court,
it has not been appealed. However, one issue that is involved is that
at the time that they obtained this Mayes patent in the Patent Office, counsel who were
prosecuting both the Isbell and Mayes patents together filed an affidavit in the Patent
Office which we maintain was fraudulent as a result of which this Mayes patent issue.
That affidavit concerned both inventions, both Isbell patent and the Mayes patent inventions
and one of our contentions is that the Court of Appeals having reversed Judge Hoffman and
find that this affidavit was less than candid and that it was deliberately given to mislead
the Patent Office that one of the questions we raised is whether under those circumstances,
there should be any standing in equity on either patents for the plaintiff.
And also involved in our case is the fact that the minute, the fruits of this fraud
were obtained, out in the market place they went with copious advertisements telling the
whole world they invented the broad log periodic antenna, nobody else could make one and this
coupled with a whole series of other acts almost put our client out of a business.
So that we have a counterclaim which is in point 2, if you will, question number 4 now
before this Court as to whether this is fair competition and whether this is not violative
of the antitrust laws to take the fruits of an illegally obtained patent and use it the
way it was used in the marketplace to suppress competition.
Turning back for the moment to the obviousness of the Isbell patent, at the time that Isbell
made his invention, this whole magic of log periodicity had been invented long since as
Judge Hoffman found, in the early 1950s, at the University of Illinois.
Its very simple. What it means is that in order to have your
television antenna, listen to all of the channels from the low frequencies to the high frequencies,
we pit in a whole bunch of these antennas and we tuned them to different frequencies
and if you shape them in the way that they go from the long wavelengths, down to the
short wavelengths, just taper the shape, thats a log-width variation, thats all it means
and if you space it also in accordance with the length that again is a log-width in variation.
Those principles and that discovery, we all admit was known before Isbell came into the
scene. What then that Isbell claim was his invention?
Uh-huh, he said, other people while they have done that variation of having long shorter,
shorter, shorter, shorter, shorter, while they have done that before, they didnt do
with the simple single wire. They did it of what he calls teeth.
You see this a little a triangular teeth and they didnt take and just use one wire instead
of the tooth. So this is supposedly what Mr. Isbell invented,
but when Mr. Harris, their expert got on the stand, he admitted to us as shown in the record
here that the ideas of these teeth or straight lines, or folded lines, these were all well-known
dipoles, all well-known antennas and in fact, they all operate the same way to produce the
same result. I would like to hold up for you from appendix,
volume 2, if I may, page 475, the sketches that their witness, Mr. Harris put on the
board and which we transcribed on the paper, 475 and 476 where he shows, if Your Honors
please, First, the straight lines, thats the straight line dipoles so-called of Isbell.
And up above what he shows what the current is, this loop dash line, that means the radio
currents go across the antenna in that kind of a distribution.
Then on the next page, Mr. Harris, their expert, sketches these triangular loops such as I
showed you in items 6 and he shows the same current distribution.
And below that he shows that you could fold the wire into a rectangular loop and get the
same current distribution. And there's no dispute but that all of these
antennas were known long before Isbell, decades. So, that the question resolves itself into,
can you give us many patents as there are well-known types of antenna shapes by just
magically putting them in this whole formula for log periodicity?
And this is what the Court of Appeals of the Eighth Circuit found to answer in a negative,
but this is what Judge Hoffman answered in the affirmative.
Now, why? Judge Hoffman was impressed by Mr. DuHamels
testimony that he was surprised that these straight line elements would work.
Though he said after he thought about it, he realized they would, but when was he surprised?
There is absolutely nothing in this record showing that it was not obvious at the time
Mr. Isbell proposed to change from a thick antenna to a thin wire that it was not obvious
and Judge Hoffman did not find that it was not obvious at the time Isbell made the invention.
He just said, at some time it was not predictable whether these different kinds of things would
work, but the statute says, were concerned in Section 103 with obviousness at the time
of the invention. And fortunately, we were able to put in a
document which was contemporary that Mr. Isbells invention, a document of the University of
Illinois Laboratory itself whereas we quote in our brief and we produce this only two
pages long, in the first part, they say, Now, we can predict from the mathematics the operation
of multi-element log periodic antennas and then on a lower paragraph it says, Mr. Isbell
is going to thin this down now into zero with almost little wires.
And that document itself contemporaneous not in the anticipation of lawsuits shows beyond
any reasonable doubt even if these were criminal test that at that time it was completely obvious
to those skilled in the art that Isbells trivial change was an experiment but not something
that was unobvious to those skilled in the art.
>> Harry A. Blackmun: Mr. Rines, you keep referring to what the Eighth Circuit found,
bring it up from my recollection. Do you recall who tried in the District Court
and whether invalidity was the result in the District Court also?
>> Robert H. Rines: Yes, it was. This was tried before Judge Stevenson and
Judge Stevenson found what I have just told you, the Court of Appeals sustained it.
>> Harry A. Blackmun: In the Southern District of Iowa, then?
>> Robert H. Rines: Excuse me? >> Harry A. Blackmun: In the Southern District
of Iowa? >> Robert H. Rines: Thats right Judge Blackmun.
>> Byron R. White: Well, I dont -- let's assume that the result of an experiment is not obvious
when it isnt predictable, but the experiment itself is obvious.
I mean, if you want to know what the result is going to be at least there's plenty of
indications of what kind of experiments you want to run.
>> Robert H. Rines: Youre absolutely right, Mr. Justice White.
>> Byron R. White: Now, I dont suppose unpredictability (Voice Overlap)
>> Robert H. Rines: Its not synonymous with obviousness, but you see Judge Hoffman, we
believe fell into the err of making it synonymous with obviousness and his grounds where since
it was unpredictable, I therefore, think its unobvious.
Now, the Court of Appeals in Eighth Circuit said, Thats not the test, its obviousness
not predictability. They said, If it will be obvious for a skilled
person what to try even when you dont know everything that is going to happen once you
try it. If youd be led by the trier to try this thing,
then that is not obvious because it was unpredictable. >> Byron R. White: Is this a pretty good law
then in other cases? >> Robert H. Rines: I havent found it.
The brief of the American Patent Law Association is pleading with this Court and I think we
do too to stick to Graham versus Deere, and these other cases where you have set forth
sensible tests as to how do you determine obviousness.
You look at the scope of the prior art, you look at the claims, you compare the difference,
you look at the skill of the man at that time and we feel this predictability issue comes
in, in that skill. And would a man really have said, Sure, try
that, we know that. Its going to work somehow even though I can't
tell you exactly what the outcome is. So, we feel obviousness should be the testing
and there isnt much law confusing these two that we've been able to find.
Reaching then our conclusion that on a much better record and with an opportunity even
of trial and expert testimony, the Eighth Circuit reached the conclusion of obviousness
and realizing that Judge Hoffman confused predictability and obviousness.
And at that, his confusion went to Mr. DuHamel talking about certain as esoteric structures
that werent obvious. He didnt say, Making these particular little
elements was an obvious. Oh!
No. Let me show you the testimony that he talked
about when he spoke of an obviousness. At pages 412 of volume 2 of the appendix,
see this big conical structure, this sweeping fold going up into the air on page 413, this
zigzag configuration, this vertical thing going up with all kinds of lumps on it, this
is the testimony of Dr. DuHamel, these were the things he put in evidence to convince
the District Court. It wasnt unpredictable that all, Dipole elements
could be shaped in a log periodic and come out right, but he did not say that merely
to take the prior thick antennas and make one wire of it wasnt obvious.
Now, in his cross-examination, Dr. DuHamel, witness for the University of Illinois admitted
what I hold in my hand here which is defendants exhibit 24 is a correct representation of
what he described in his prior patent, prior to Isbell, its prior up.
If you'll notice, he has antenna dipoles that vary in length as we go down from long and
short and spacings that vary long and short, the so-called log periodic spacing.
This, believe it or not, is one of the Blonder-Tongue infringements and what is the difference,
superficially? Instead of having triangles, we have straight
lines. If this was prior art, could the Isbell patent
possibly be valid if it covers this, another equally well-known type of dipole?
Just taking and thinning these triangular loops into single wires.
We think the question answers itself. We come now to summarize other points with
regard to the invalidity of the Isbell patent and the non-infringement thereof.
Every claim of the Isbell patent is restricted to the idea of putting of these antennas as
close as you can in one plane, so-called coplanar. Judge Hoffman read out of the claims the word
coplanar and found that a Blonder-Tongue antenna which is their principle ones which had dipoles
deliberately in two widely space planes which is the Blonder patent not the Isbell patent,
he found that that is all in the same plane, he doesnt explain why.
He found it all in the same plane and hence, he found the Isbell claims coplanar our claims
to be infringed by this antenna. When we came to the Court of Appeals, they
apparently couldnt stomach that and so they made their own supposition.
They said apparently and all they were looking at was this antenna at that time.
Apparently, they said, You cant physically build these two sets of antennas to get them
in the same plane. So, there has to be some separation about
the order of an inch. Hence they said, We think coplanar applies
to the Blonder-Tongue antennas. When we called to their attention that the
real antennas of Blonder-Tongue are four inches apart and that has nothing to do with how
close you can put these together, we can put them together much closer mechanically, but
its an entirely different purpose, they just took the one-inch reference out of their decision
but let it stand that that is coplanar. We submit that any such extension of the monopoly
of a patent completely began to file history, completely beyond everything they have asked
for strip the word coplanar out of the claims and to hold a new inventor to be infringing
when it isnt coplanar and doesnt even do the same thing is improper, and that --
>> Hugo L. Black: And that do say. >> Robert H. Rines: This is the Blonder-Tongue,
Blonder-Shinto patent in our counterclaim. >> Hugo L. Black: What's the other claim?
>> Robert H. Rines: The Isbell patent of the University of Illinois.
>> Hugo L. Black: Did he just pick out? >> Robert H. Rines: No, this is also made
in accordance with the Blonder-Tongue patent. In other words, these are in two different
planes. >> Hugo L. Black: Do you have the Isbell patent
there? >> Robert H. Rines: I do, Your Honor.
We dont have the structure of it as a model, but what it is, Your Honor is instead of having
these two tubes, this widely-space apart, Isbell put them absolutely close together
as shown in this patent, almost touching. So that they can all be in the same plane.
>> Hugo L. Black: Is that supposed to be the invention?
>> Robert H. Rines: Yes, Your Honor. They stress this throughout the patent.
They must be in the same plane and the reason --
>> Hugo L. Black: Can you put closer together? >> Robert H. Rines: Very close together as
close together as you can get it. >> Hugo L. Black: And that's the whole claim?
>> Robert H. Rines: Thats their whole claim, coplanar antennas in one plane shaped for
these wires in this taper-shaped log width mic shape we talked about.
>> Hugo L. Black: Does shape have anything to do with it or is it closeness together?
>> Robert H. Rines: No, there are two requirements Mr. Justice Black.
The first requirement is that everything be in the same plane.
The second requirement is that the lengths of these antennas taper such as Ive shown
to you and that spacing is taper, put those three things together and that's Isbell so-called
invention. >> Hugo L. Black: And what's the difference
in that in the other one? >> Robert H. Rines: So far as Blonder-Tongue
is concerned, it deliberately took these antennas out of the same claim and space them a sizable
difference -- distance apart compared to the wavelength change the whole concept of the
feed, a different kind of electrical feed and operate with antennas that are not anywhere
near in the same plane, but they do have log periodic shape.
>> Hugo L. Black: When you get down to it, the difference is the closeness of these rods
to each other? >> Robert H. Rines: That will be the difference,
yes Your Honor. Now, the Patent Office was --
>> Potter Stewart: Now, this device down at the table to your left, is that the --
>> Robert H. Rines: Blonder-Tongue. >> Potter Stewart: Is that the subject of
your counterclaim? >> Robert H. Rines: This is the subject of
the accused infringement. >> Potter Stewart: How about your counterclaim?
>> Robert H. Rines: Since, we file -- since our patent came out, theyve copied it.
So, they have antennas just like this. >> Potter Stewart: Well, I'm asking, what
was the -- >> Robert H. Rines: Just like this Your Honor.
>> Potter Stewart: (Voice Overlap) your counterclaim for patent infringement?
>> Robert H. Rines: Just like this Your Honor. >> Potter Stewart: There was.
>> Robert H. Rines: Yes, Your Honor. >> Byron R. White: And that Isbell is endowed
for the lack of invention, I suppose Blonder-Tongue is too?
>> Robert H. Rines: I dont think we have a strong patent Mr. Justice White, but I do
think that were entitled to have a trial on it.
>> Byron R. White: But you think if Isbell is valid, yours ought to be?
>> Robert H. Rines: No, I dont say that at all.
Isbell has tried to capture the whole log periodic concept of all kinds of shapes of
dipole, though he says now he just wants the little ones.
>> Byron R. White: Do you mean you're conceding that Isbells patent is valid, yours infringe
it? >> Robert H. Rines: If Isbells patent were
valid, yes Your Honor. This antenna device would infringe it, no
question about that. >> Hugo L. Black: Do you say they tried to
capture all of it by getting the rods closer together or further apart?
>> Robert H. Rines: No, they tried to capture by their claim language Mr. Justice Black.
They dont say in the patent -- >> Hugo L. Black: When they get through, what
is the physical thing there? >> Robert H. Rines: Oh!
The physical thing they have is antennas all in one plane and thats the way they built
it until Blonder came and showed a way that you didnt need it in all one plane.
And this was such a remarkable concept that you could move the planes and still get log
periodicity that the Patent Office granted us a patent for it.
It was a highly unobvious thing we maintained from all of the training before that everybody
tried to get it in the same plane. >> Byron R. White: Well, unobvious from Isbell
maybe but -- >> Robert H. Rines: Maybe obvious to one skilled
in the art. I'm not going to pretend we got the worlds
greatest patent. All I say is this Court ought to guarantee
our right to a trial and not have Judge Hoffman in one line say its obvious and completely
ignore your Graham versus Deere, make no findings at all.
Come and throw our patent if it is an invention, but give us due process of law.
You lay down rules in Graham versus Deere, the District Court is supposed to follow.
You said, Make this finding, make thing finding. We have it in the rule books, the federal
rules of civil procedure whats he is suppose to do.
>> Harry A. Blackmun: Mr. Rines, bring me along now, did Isbells patent antedate yours?
>> Robert H. Rines: Oh! Yes.
Hes a pioneer compared to us. >> Harry A. Blackmun: And I understood you
do say in response of Mr. Justice White that if their patent is valid, yours has infringed
it? >> Robert H. Rines: If you take this idea
of coplanar and say I'm going to read it out of the claim so that it reads whether the
two -- whether the dipoles are in the same plane or widely separated, we infringe.
But if you read coplanar in Isbells patent, we dont infringe.
We deliberately get a way from putting it in the same plane.
Does that make that clear? >> Harry A. Blackmun: Well, I thought just
a moment ago, you had made a concession that seem to me to be an important one and that
would take with it a concession of invalidity at your patent, assuming theirs was valid?
>> Robert H. Rines: Well, if I said that, I didnt mean it that way.
I was saying it in a context if we read out of the claim -- coplanar and we give it no
limitation in the Isbell claim so that the things can be in the same plane or different
planes. Ii you took that out, we infringe Isbells
patent but that isnt Isbells patent. >> Byron R. White: But if you construe obviousness
or nonobviousness the way you want us to, it sounds to me like your patent isnt a very
strong as you say. >> Robert H. Rines: I admit that.
I just would like the right to try my patent in a Courts of America.
Its presumed valid, Id like the right to trial. >> John M. Harlan: Well, you better address
yourself to publication issue. >> Robert H. Rines: Yes I am.
The last concept that I want to address myself to in connection with the Isbell situation
is that there was a publication completely describing Isbells patent that was put in
a local library more than one year before the filing of that patent application.
The District Court disputed whether or not it was a real library.
The Court of Appeals recognized it was a library when we showed them the documents of the university
itself calling it library and -- >> John M. Harlan: And Ms. Johnsons operations?
>> Robert H. Rines: Ms. Johnsons operation and again the Supreme Court has never passed
on this point so far as we can find. There are lower court decisions, but we have
followed that line of cases it says, if you put in a library even a small library this
constitutes your intention to make it public and the mere fact that nobody came to that
library to draw up the copy is immaterial. We found --
>> Hugo L. Black: Where is the library? >> Robert H. Rines: In the University of Illinois,
Antenna Section, they have a library of antenna publications where people come and draw these
things out and the librarian so testified. >> John M. Harlan: How would you characterize
in the laws its just the lower court as to what standard of publication is?
>> Robert H. Rines: Judge Hoffman characterized that for me.
He said, if this really was a library and the Ms. Johnson where a librarian he said,
I'm compelled to say this was published more than a year before the patent.
But then he turned around and said, but I dont think its a real library; its a tiny
place in the university. >> Hugo L. Black: But whats the heading on
the door? >> Robert H. Rines: I beg your pardon.
>> Hugo L. Black: What's the heading on the door?
>> Robert H. Rines: Its called EELL, the local library and this is the way it is on the distribution
sheets of all the material that they send. They call it a library.
Id like to take just a few minutes now on the matter of what happened to us in the marketplace
once this fraudulently obtained patent in the Patent Office came out.
The foundation and their licensee, exclusive licensee then JFD took this patent, published
copious ads all over the country, loop magazine we put in whole copies of these announcing
that they had patented the log periodic formula that nobody else could make log periodic antennas.
Then they took these ads out into the marketplace. They used them to coerce purchasers to buy
only their products. It was the University of Illinois and JFD,
they had the patents nobody else can use it if you buy Blonder-Tongue you're going to
be in trouble, were going to sue you and they did, they sued everybody.
We maintain that we have offered some evidence of tie-in sales that the District Court said
was some evidence. We offered evidence of raiding.
Were in the heat of the litigation. They took away our employees who were investigating
their activities and with them, disappeared all of the records.
How am I going to prove my case? Where just before the trial; they hideaway
our co-inventor of our own patent in suit so that I couldnt use his testimony on the
matter of infringement. All of these -- despite all of these things,
we did through depositions, get into the record something the District Court conceded their
patent mis-marked. The District Court says, thats de minimis
though. They put on these ads, I told you about saying
nobody else could make an antenna that they found.
They not only raided us, but in the marketplace they actually told people, we have evidence
of this, not the strongest but its in the record that if they barred any of Blonder-Tongues
line they wouldnt sell them their patented antennas.
And we maintain that the District Court in picking all these little things and saying,
well, you havent prove this enough, didnt follow the law in looking at the totality
of all these acts which we think was a serious antitrust and unfair competition violation
because it all stemmed from this fraudulently obtained patent which the Court of Appeals
threw out for that reason, but they didnt use the word fraud they said deception.
All from that and nearly put our client out of business.
I would reserve for my rebuttal, if you will, answers with regard to the Solicitor Generals
points on Triplett v. Lowell and what my brother might have to say about these issues.
>> Warren E. Burger: Very well. Mr. McLaren.
>> Mclaren: Mr. Chief Justice, may it please the Court.
The United States appears as amicus in this matter today solely on the question of whether
or not or to what extent the Court should continue to adhere to the doctrine of Triplett
v. Lowell. What Triplett held is that a determination
of invalidity of a patent in a suit against one defendant does not preclude another suit
upon the same claims against another defendant. The holding was on the ground of the common
law requirement of mutuality of estoppel as no one can take advantage of an earlier judgment
unless he would also be bound by it. Now, the Governments interest in this matter
is on three grounds. The Government is a very frequent party in
patent litigation. The Government has serious responsibilities
both for conducting and administering the patent system and for enforcement of the antitrust
laws and of course the Government has a great interest in the courts and in the fair and
efficient administration of justice. Now, if I may, at the outset, I would like
to summarize our views and our position and then to discuss the arguments for and against
the mutuality requirement. During the last approximately 30 years, the
strict doctrine of mutuality of estoppel has eroded very substantially both in the federal
courts and federal questions as well as in the state courts.
Until now, I think its fair to say it is no longer the majority rule in the general federal
law and federal questions or in our most populist states.
As matter fact, one New York Court of Appeals judge not to long ago called mutuality a dead
letter under the New York law. However, in the patent field, the lower courts
have felt bound to follow the doctrine of Triplett v. Lowell and they had adhered to
the mutuality rule saying from time to time that it was up to this Court or to the Congress
to make any change in the rule. This happened for example in this very case,
in the opinion in the Seventh Circuit below, they questioned the soundness of the rule,
but indicated it had to follow it. It happened a short time ago in the case of
Nickerson v. Kutschera in the Third Circuit where the Court of Appeals reluctantly followed
Triplett, reversing the Delaware District Court and indicating its agreement that there
should have been an estoppel. Now, we do not suggest abandoning a rigid,
strict mutuality estoppel rule only to replace it with another strict kind of rule such as
for example in rem invalidity which apparently is the fear of the patent bar.
Instead, what we suggest is a loosening of the Triplett rule to permit pleading and consideration
of a prior invalidity judgment as defense matter.
The language of Triplett expressly holds -- expressly prohibits the pleading of a prior judgment
in so many words and we think that should not be.
We would like the courts consider unilateral estoppel, if you will, and consider such claims
on a case by case basis, giving due weight and regard to any factors that would point
to unfairness or to an anomalous result by application of the estoppel doctrine.
Now, turning to the arguments in favor of abandoning the mutuality requirement, I think
that the main argument is that it serves no useful purpose.
This criticism incidentally goes as far back as the works of Jeremy Bentham in the middle
of the 19th century. He found that mutuality served no rational
purpose and he said, It was a maxim which one would suppose to have found its way from
the gaming table to the bench. In more recent times, in the landmark Bernhard
decision, as the Supreme Court of California in 1942, an opinion by Mr. Justice Traynor.
He likewise found no rationalization for the rule and he was unable to see and he said
in the opinion by the public policy values of the res judicata doctrine, the certainty,
the finality, the limiting of litigation, judicial economy.
He could not see why these should fall before an artificial requirement of mutuality.
Now, it said that he might have invoked the indemnity exception to this rule in error
and number or exceptions. In fact, I think that in state still following
the mutuality rule. Its fair to say its riddled with exceptions
and the Bernhard case probably could have gone off on that ground.
But instead Justice Traynor attacked the doctrine in itself and if in particular, he felt that
a estoppel should arise and should be usable by a defendant against a plaintiff who had
had a full opportunity to try his claim and had lost.
As the courts, in both federal and state had followed Bernhard one after another, its clear
that the crowded condition of dockets and the need for judicial economy has weighed
heavily when the courts have considered the artificial concept and the lack of value to
mutuality on the one hand and weighed this other considerations against them.
Now, specifically in the patent field the arguments against the mutuality I think are
primarily three in number. First, its argued that Triplett gives a bad
patent, almost as much infants as a good one. Businessmen except a license, they pay a royalty
to buy their piece despite the fact that a patent may once have been held invalid.
They do it to buy their piece. To put it another way, the mutuality doctrine
places obstacles in the way of eliminating bad patents.
I think its fair to say that this would be contrary to the policy stated by the Court
in the recent Lear v. Adkins case. >> John M. Harlan: Of course McLaren, you're
making your argument which might give conflicts in the case with the parties of both sides
of this case as in Adkins and Triplett. I suppose res judicata is a defense in --
>> Mclaren: I would think it is -- >> John M. Harlan: But all I'm suggesting
is that the context of the litigation for both sides or at the least the party to benefit
the doctrine could be invoke as to where it is not a very happy situation that needs to
be considered in the decision of this Court. >> Mclaren: Well, Mr. Justice Harlan, I think
that in view of the fact that petitioner does asked that the rule of the Seventh Circuit
be upset, that it is up to this Court to determine the grounds on which it is upset and to determine
what shall happen in the District Court if it -- the case is remanded and it would be
our view that the matter should be remanded for the District Court to consider the Winegard
litigation and to see what additional evidence, what hardship, why the District Court should
not adhere to Winegard rule. I dont think that this Court is bound by the
grounds which the parties assert when they come up here and invoke the courts power.
>> Byron R. White: Mr. McLaren, I thought I understood Mr. Rines to say that he thought
perhaps he wasnt asking that Triplett be overruled, but there might be room for modifying in this
case, in the specific circumstances of this case to preclude re-litigating what the Eighth
Circuit did in that particular circumstance, thats what I understood, maybe I'm wrong?
>> Mclaren: No, I sol understood him also Mr. Justice White.
I think this is a little different position than was taken in his brief, but I think it
is very close to the position we take. I think also the brief amicus of the Patent
Bar Association is not too far from the position we take.
They dont want to see a new rigid in rem invalidity kind of rule established and neither do we.
We are not suggesting that there should be a one shop and that is all kind of situation.
We recognize some of these arguments that are made pro and con.
We think that the court is the place. The courts are the instrument for carrying
out a reconsideration of Triplett in a cautious, case by case and step by step basis.
I would advert to the considerations set forth in Rule 60 for a new trial.
I think they list newly discovered evidence, fraud or perjury, some sort of misconduct
by the other side, and then I think it winds up with the statement, any other matter that
is necessary for fairness and justice and we would suggest to similar rule in these
cases. >> John M. Harlan: But nevertheless, in view
of the position of the parties, at least as taken in their briefs, what youre suggesting
we do is sua sponte ourselves to overrule the prior decisions of this Court (Inaudible)
without argument by the Court? >> Mclaren: I think Mr. Justice Harlan that
the Court would be warranted at least in reexamining that portion of Triplett which says that a
defendant may not plead as a defense, I think there is almost direct quote the fact of prior
litigation. I think that the Court should follow the trend,
the modern trend in the courts, it should release the lower courts who apparently feel
bound to follow the Triplett rule in a rather complete fashion despite their own ideas of
what would be fair in the -- >> John M. Harlan: Why do a litigation in
which that issue is put to us by the parties? >> Mclaren: I would think Mr. Justice Harlan
that the situation in the courts now considering the crowded dockets, considering the techno-graft
litigation which I now -- I understand now numbers some 70 cases in 20 districts and
more than 200 defendants. I think that it would be well if the Court
could see its way clear to giving consideration to this matter.
>> Hugo L. Black: Has it been up in Congress before?
>> Mclaren: Yes, Mr. Justice Black. I it was up in Congress in a Bill two years
ago as a result of recommendation of Presidential Patent Commission and it was suggested at
that time that a kind of an in rem invalidity rule be adopted.
That Bill was not reintroduced in the last Congress and the provisions in the current
patent, well, I guess that Bill has not yet been re-offered but it was in the last Congress
had to with the payment of costs and I believe counsel fees where a party has unjustifiably
brought a second or more later litigation. But I would say that the Congress has given
no indication either of approval or disapproval of the Triplett rule.
The Triplett rule is I think part of what the Court saw in 1936 as the general common
law on the subject of estoppel by judgment and I think that the other parts of the law
having changed, its appropriate for the Court to develop the changes insofar as they apply
in the patent field. >> Hugo L. Black: Does the Triplett rule rests
in all of the statute or is it all together a judicial creation?
>> Mclaren: I would say, it rests all together on what was then the generally accepted common
law rule Mr. Justice Black, yes. Well, just to conclude the arguments are set
forth in our brief in favor of overruling the mutuality doctrine.
The other parties, University of Illinois particularly some of the amicus briefs indicate
the arguments in favor of mutuality doctrine. Our conclusion recognizing that there are
important questions raised, we think in balance that a clear case has been made for reconsideration
of Triplett. It was based on the general common law when
it was decided. That law is now changed and we do not think
that Triplett is serving us so well that it should be retained as an exception to what
we regard as the modern rule and -- >> Hugo L. Black: Supposing we should agree
with you, what would be the effect on this case?
>> Mclaren: I would think Mr. Justice Black that it would be reversed, remanded to the
trial court to consider the Winegard litigation and what additional evidence the University
of Illinois would have to offer to change that ruling.
And if it cannot make out a case for a further trial, make out a case as to why it didnt
present Dr. DuHamels testimony for example on the first trial then I would think that
the trial judge should adhere to it. >> Warren E. Burger: I thought your friend's
request was somewhat narrower than that. He just said he wanted a trial.
One opportunity to try a case the way he thought that it should have been tried, that is with
his witnesses available. I didnt understand him to suggest that the
District Court in Illinois should have to give any particular weight to what the District
Court in Iowa had done? >> Mclaren: Mr. Chief Justice, I think that
he was referring to his counterclaim that -- where he said he wanted his full trial
and I think that Judge Hoffman had dismissed his counterclaim on his patent without findings
on the obviousness issue. I believe that was what was referred to.
>> Warren E. Burger: I have to clear that up in his rebuttal.
>> Mclaren: Yes. >> Potter Stewart: Of course the Court of
Appeals here for the Seventh Circuit, I'm looking at page 85 of the appendix, I dont
know what page it is in the F 2nd, but in any event they recognize that the -- by quoting
the sentence from the Triplett opinion, they recognize that the Iowa decision should be,
at least Eighth Circuit's decision should be as a matter of accommodation should be
respected and given as I say great weight. Its -- I dont quite understand what more you
would want them to do. They did pay -- they respected it, they read
it, they understood it and they concluded that they disagreed with it.
>> Mclaren: I read that to mean that, but for the Triplett rule would have followed
the Eighth Circuit, Justice Stewart. >> Potter Stewart: Well, of course now you
read into this. >> Mclaren: I think they went on to cite it
and another Justice in that Circuit just a few years ago found the doctrine abhorrent
in light of the crowded condition of the dockets out there.
>> Potter Stewart: Yes, I saw that quotation in your brief.
>> Mclaren: And I venture to say that they would follow a unilateral estoppel rule of
the kind that we have outlined which would always be subject to a fairness doctrine.
We do not suggest any kind of a rigid per se or in rem rule.
I thank you, Your Honor. >> Warren E. Burger: Mr. Marshall.
>> Williams A. Marshall: Mr. Chief Justice, may it please the Court.
As I listen to petitioners standing before this Court, it sounded like he was asking
for a trial de novo, that isn't the issues that we have before this Court.
There at the -- there was two trials on this one particular patent, the Isbell patent.
There were concurring findings made below by not only the Eighth Circuit, but also the
Seventh Circuit Court of Appeals and we feel that this Court should go from that particular
point rather than start over and review all of the facts in these matters.
For example in the concept of due process, this wasnt even raised as an issue in the
petition for certiorari. This is an argument that petitioners have
brought up here but has not been raised as a point.
Therefore, I'm not going to pursue that because the concurrent findings below in the Seventh
Circuit clearly held that there was no fraud so far as the endeavors of the University
of Illinois Foundation regarding the prosecution of the Mayes patent.
I might point out so that this Court can properly view this matter in its proper perspective.
The University of Illinois Foundation is an arm of the University of Illinois and as such
does not manufacture nor sell anything. Its sole function in particular instance is
the function as a licensing agent to license antenna manufactures under the Isbell patent
or any other patents they might happen to have in their portfolio.
Similarly, this question of the fraudulent affidavit, that affidavit was made as we contend
that there was nothing fraudulent about at all, but that affidavit was made in the prosecution
of the Mayes patent which is not even an issue here and from the standpoint of the courts
below, they found that there was no fraud there.
The Seventh Circuit Court of Appeals said that that patent was invalid on the basis
of obviousness that it was the result or the fruit of a fraudulent affidavit.
Now, let me get down to what I feel is the basic issue so far as why were up here.
We -- if I will -- if Ill get a chance Id love to discuss the Triplett v. Lowell because
I have a lot of good points on that one, but my principle concern right here is the question
of obviousness as equated to this concept of obvious to try test.
You have to remember that in the end-result that Section 103 calls for the test to be
unobviousness. But what we say is that predictability is
a factor which goes into determining the question of obviousness so that you have to say -- you
have to consider the obvious to try test versus the concept of predictability as it relates
to the issue of obviousness. Nobody is so naive in the patent profession
to espouse the doctrine that unpredictability ipso facto gives you an ultimate result of
unobviousness. You have to consider the not the platitude,
but the end-result that were looking for. Predictability can be of kind or it can be
of degree. When you talk about predictability, predictability
can be in terms of routine experimentation or something that is predictable to the routine
experimenter versus the unpredictability that arises from a situation which a pioneer inventor
is faced with. Let me illustrate the routine type of approach.
That was brought up in the case of -- in the Mandel v. Wallace, a case which was before
this Court involving the incorporation of a corrosion inhibitor in a deodorant.
The Court -- Supreme Court justifiably found that the incorporation of this corrosion inhibitor
into this cosmetic was obvious because it should have been perfectly apparent to any
routine investigator to investigate 1, 2, 3, or 4 corrosion inhibitors, try them in
this particular cosmetic environment, as underarm deodorant environment and expect that they
would work. Therefore you have the concept of routine
investigation, routine experimentation. You couldnt really predict absolutely that
this corrosion inhibitor would work, but you had a reasonable expectation.
Now, you go to the other end. This is a predictability of degree which in
my opinion and in the opinion of the Supreme Court we agree is unpatentable.
This is a routine type of experimentation. Let's go and see what we had in the case of
Isbell. Isbell did not have this type of background
prior art at all. >> Thurgood Marshall: Mr. Marshall, if you
have these two pencils and you get a blurred signal and so everybody realized that one
of the problems is theyre together. So you separate them until you dont get a
blurred signal, could that be an invention? >> Williams A. Marshall: Mr. Justice you have
reduced it is the over simplification. You can't do that, that is a generalized statement
that I wouldnt even answer yes or no because again I would have to depend upon experimentation.
If by virtue of separating these two space booms there was some teaching in the prior
art that I was in clarified the signal is not patentable.
But on the other hand, where you have a situation like we have in the instance of the Isbell
patent, not a question I think in all due deference to petitioner, he misstated this
concept Mr. Justice Black because if the invention -- the Isbell invention does not merely go
to the spacing of the booms, there are many other concepts involved in that which you
can see from a review of the claims. I dont want to go in the claims because this
is a completely complex and technical approach that we can spend three hours on.
But basically, what you have in the instance of the Isbell invention is to complete unpredictability.
This was not only found by the Eighth Circuit Court of Appeals found by Judge Hoffman, it
was found where the Seventh Circuit Court of Appeals.
So for Mr. Rines or the petitioner to say that the end-result was predictable is wrong
because there is a concurrent finding that it was not predictable.
What we have is the instance not of taking a bunch of components because we have to recognize
that just because the claimed invention is a combination of all elements, this doesnt
per se in make it invalid in accordance with the U.S. v. Adams doctrine.
We have a situation here where one did not know what was going to happen.
There was no big sign post, no guide post, which says log periodic antennas can be made.
There was a concept and as a matter of fact the Eighth Circuit Court of Appeals found
that Judge Stevenson was clearly erroneous in making that finding and found that there
was no technique, no principle for designing log periodic antennas.
What they found was that there is a principle of log periodicity, but this in and of itself
doesnt permit you to design a log periodic antenna only to design a log periodic structure.
The structures ,if you will look at the Jassik (ph) Handbook which is in 430 of appendix
2, you'll see you dont have to look at it now, but there are a number of log periodic
structures that were shown -- that were available, that worked as log periodic antennas.
Jassik (ph) himself says that log periodicity is unpredictable.
Now, what you have is the dipole antennas, which were old, you have the transmission
lines for connecting the dipole antennas, those were old.
You have the spacing of the dipoles, you have the length of the dipoles, on the basis of
this log periodic theory. But, nobody in the prior art told you how
to put all these elements together with the predictability that they would work.
>> Potter Stewart: This could even talk about the cable antenna which was --
>> Williams A. Marshall: Yes sir, that was one in which, instead of having straight dipoles,
the dipoles were folded dipoles. The both of the courts below found --
>> Potter Stewart: That was in the prior art that --
>> Williams A. Marshall: Yes, it was. And that was found not to be anticipatory,
nor -- and it was also found that this invention was obvious over the cable antenna.
>> Potter Stewart: (Voice Overlap) the cable was disclosed in the application?
>> Williams A. Marshall: No sir, it wasn't because I will tell you the difference because
basically what you have in the case of a cable antenna, was a folded dipole, and you get
into the concept of frequency, and the frequency independence, and it was known that dipole
antennas because those were -- the folded dipoles were one of the first type of antennas
that were used, I am sure that you have all seen that.
They were known to be broadband antennas. Straight dipoles were not, they did not have
this bandwidth that you would get inherently from a folded dipole.
Therefore, it was unobvious to go from what was a broadband dipole to a straight dipole
which had an narrow width, narrow bandwidth. >> Potter Stewart: All of these antennas are
antennas you put on the rooftop rather than on your set?
>> Williams A. Marshall: They can work in the house, for example this one here --you
could put on your set and it would work. This is for the ultra high frequency and of
the range of channels 12 through 83. >> Potter Stewart: That doesn't make a real
difference whether it's from top or -- >> Williams A. Marshall: No sir, not at all.
But, what you have is this once you assembled these elements, you have the inter-relationship
between them. You don't know what's going to happen.
For example, they're all picking up signals all the time.
So that you have this particular dipole receiving a given channel area while this one receiving
another one and you have them both receiving the same signal.
So that you get this inter dependent reaction that Mr. Harris has testified to in his testimony,
is one of the problems that you have in predicting how this type of antenna is going to work?
So that you didn't have any place where Mr. Isbell could start.
This is the type of case where even the Supreme Courts have recognized that, there is this
unpredictability aspect. For example, in the Great Atlantic and Pacific
case, 340 US at page 152 where the courts recognized that in the conduit science as
such as chemistry, such as the electronics, you do have a given problem of predictability
or unpredictability that you don't have in the purely mechanical arts.
If the concept of obvious to try is going to be the log land high, I don't think that
it augurs well for the patent system, because I don't know of any invention, that is not
a combination of all or known elements. For example, even the Edison light bulb which
was a patent which was adjudicated in 52 Fed 200.
I am sure that you all have heard the story about Mr. Edison and his trials and tribulations
in inventing the light bulb. Under the theory of obvious to try without
regard to bringing in the concept of predictability of kind, you would have an invalid patent,
because all Mr. Edison did was try something like 1400 filaments to try and to eventually
get to as electric light bulb. So that what we have here is Isbell coming
up with an invention, something that was absolutely unpredictable as found by the courts below.
The record us replete that in the case of log periodic antennas, one could not predict
that what the end result was, and it was not a question of cutting and trying because there
are thousands and thousands of permutations and combinations, that one can try -- cut
and try with to eventually come up with an Isbell type of antenna.
Now, if I might go to the Triplett situation, so fas as I believe that -- the library concept
Your Honor. Here again, I believe Mr. Justice Harlan was
the one who asked about the library, here we had concurrent findings below that this
was not a library. There was no -- it was not shown on the part
of anybody. >> Warren E. Burger: You say concurrent, you
mean the district judges in each of the two circuits or the --?
>> Williams A. Marshall: In the Eighth Circuit Your Honor.
That question was -- it was raised as a defense, but was never decided by either Judge Stevenson
or the Eighth Circuit Court of Appeals. That was actually -- they decided the invalidity
of Isbell purely on the question of 103. >> John M. Harlan: What interested me, excepting
those documents which are in none of our brief, what it effect it gives to answer Ms. Johnson
anybody (Inaudible) >> Williams A. Marshall: That is in the test.
The test is intention to publish, the test is intention to publish.
>> Potter Stewart: Is it Sixth Circuit opinion you are relying on primarily, the language
of that? >> Williams A. Marshall: Yes sir, that's right.
>> Potter Stewart: Thompkins or whatever it is?
>> Williams A. Marshall: Yes sir. No, that's the Massengill case as one of them.
>> John M. Harlan: What is the intention Mr. Marshall?
>> Williams A. Marshall: Intention to publish Your Honor, and there was absolutely no intention
to publish here because basically this quarterly report number 2 which is at issue was a report
which was prepared as a result of the antenna program which was being conducted by the University
of Illinois. As Mr. Waller testified, it was the policy
of that department to distribute to the -- let's say the correspondents who were participating
in the program copies of these reports before they were made available to the public.
So that it was quite clear that, so far as the University of Illinois found -- the University
of Illinois because they were the ones who had control of this, so far as they were concerned,
there was no intention to publish on their part, at least until it was -- these copies
were distributed to the information addressees. >> Potter Stewart: What if this had been in
library though? You would say it would still hold true (Voice
Overlap) >> Williams A. Marshall: If it were a library.
I mean, if it were a full blown library, and a document were put in that library, obviously
there was an intention to have this published to anybody who came in the library.
>> Potter Stewart: So that if this were a library, there would have been publication?
>> Williams A. Marshall: Well, if there were a library, and if it were proved that, that
document was in the library, there wasn't even any proof that it was in the library,
because these -- it was a question of three or four days timing here.
These quarterly reports were printed up and were sent from the printer to Ms. Johnson
who kept them in a bundle. She said, if someone would have come in and
knew that specific thing was there, I would have given it to him.
Well, Mr. Wallace says that, that was not the policy.
>> John M. Harlan: That was not the policy? >> Williams A. Marshall: That was not the
policy of the University of Illinois. >> John M. Harlan: You say there is intention
to publish, what do you mean by that? An Intention to publish --
>> Williams A. Marshall: Yes sir. >> John M. Harlan: As distinguished from (Inaudible)
>> Williams A. Marshall: Well, I mean I wouldn't draw a line there.
I would say that if I send a publication to the air force unless there was some confidentiality
aspects of that, that could be a publication. But there wasn't any proof that any of these
quarterly reports had been may allowed. They were merely there on the floor of Ms.
Jackson's office. They weren't even in this library.
>> Warren E. Burger: Was it indexed, so that if someone who came to look through an index,
they would try a lead to it? >> Williams A. Marshall: Not at that time,
no sir. Eventually, it would have been.
>> Warren E. Burger: Do you think that would make a difference?
>> Williams A. Marshall: Oh, I think it would. Yes sir.
>> Thurgood Marshall: In terms of the publish I am a little confusion about it.
Suppose you put it in the largest public library in Chicago and said here this for you.
The fact that they left it in the package without interfering with sure intention to
publish. I would assume --
>> Williams A. Marshall: Well, I don't know. That's pretty close Mr. Justice Marshall.
There might be an intention to publish but it wouldn't be accessible to anybody.
You would have to know it was there. So that if a bundle of pamphlets came into
the Chicago public library and were put on the floor some place and there was no index
that anyone so that anyone could go into the back room into the warehouse.
>> Thurgood Marshall: It wouldn't be as defected as just put it in envelope and mail it to
them? >> Williams A. Marshall: No sir.
>> Warren E. Burger: I don't quite see that Mr. Marshall how the intention, if that's
the focus, the intention is affected by how the librarian handles it at first instance.
Here you concede, Ms. Johnson intended to index it at some point and had not gone around
to it? >> Williams A. Marshall: Yes sir.
>> Warren E. Burger: Why should that relate back to the intent of the person who sent
it? >> Williams A. Marshall: Well, because in
this particular instance, Ms. Johnson was also, she wore two hats.
She was also like a secretary, office manager of this Electrical Engineering Department
and as a result of that, she ran these two offices plus this library, the thing that
we are talking about. I would say that for example if a publication
thesis, I mean these are the classy cases. These are ones where a thesis is deposited
in a library. When does it become a publication?
I think what we have to be concerned with is, when does it become legally known.
>> Hugo L. Black: if it wasn't a library -- >> Williams A. Marshall: Pardon me sir.
>> Hugo L. Black: If that wasn't a library, what was it?
>> Williams A. Marshall: It was a room in the Electrical Engineering building in which
pamphlets would be placed from time to time. There was no librarian who was assigned full
time there. In fact there was nobody in there full time
because most of these publications were kept in steel and files.
>> Hugo L. Black: What was the lady's occupation? >> Williams A. Marshall: Actually she was
a member of the electrical engineering staff and I believe she was -- her title was not
a librarian. She was like a secretary or an office manager
or something of that nature >> Hugo L. Black: Secretary to whom?
>> Williams A. Marshall: To Mr. Waller, Mr. Waller was the business manager of the University
of Illinois Electrical Engineering Department and she was on his staff, not as a librarian,
but as a secretary, this type of thing. >> John M. Harlan: What was Waller's testimony
-- >> Williams A. Marshall: He testified Justice
Harlan that what -- he testified as to the policy with respect to the University of Illinois,
particularly these quarterly reports which would be distributed to the information addressees,
and it was his testimony that when a report was prepared, it would be sent down to Ms.
Johnson from the printer, for distribution to the information addressees and that his
testimony was that it would not be made available to the public, even if they knew who was there,
it would not be made available to the public, until they were mailed out, until these quarterly
reports were mailed out to the information addressees.
>> Potter Stewart: And that was on May 5th 1959?
>> Williams A. Marshall: Yes sir. Which was --
>> Potter Stewart: And it is not cleared all, that this document was even in that so called
library and -- >> Williams A. Marshall: That's right.
The only testimony -- the only documentary evidence of that nature were these mailing
slips and things of that nature which clearly picked on this May 15th.
>> John M. Harlan: You say that availability is synonymous with intention of publishing,
I mean that's the intention? >> Williams A. Marshall: Well available to
the public. >> John M. Harlan: Available to the public?
>> Williams A. Marshall: Yes sir. >> Potter Stewart: Well, it need not to be
the general public. >> Williams A. Marshall: No sir.
>> Potter Stewart: It could be the scientific community or a restricted segment of the public.
It need not to be the general public? >> Williams A. Marshall: No sir.
>> John M. Harlan: What does this really mean --
>> Williams A. Marshall: Well, what she said was that if someone knew that it were there
and came in, she probably would have given it to them.
Now, this is inference on inference or innuendo or innuendo.
She didn't say that it was available to the public in the sense that a publication would
be. She didn't --
>> Potter Stewart: What if in April, the reports had been mailed out to those so called correspondents?
>> Williams A. Marshall: Then we would have a problem.
>> Potter Stewart: What? >> Williams A. Marshall: We would have a problem.
>> Potter Stewart: You'd have a problem? >> Williams A. Marshall: Yes sir.[Laughter]
>> Potter Stewart: Now, what if what if the correspondents came in on the day before they
were mailed and asked for one? >> Williams A. Marshall: Under those circumstances,
if the information addressee knew that quarterly report number two was there, he could have
come in and got it, and that may have been a publication, I don't know.
I mean that's a hypothetical because that isn't what happened here.
We didn't have anybody coming in and asking for a copy.
>> Potter Stewart: But, it was available to the addressees?
>> Williams A. Marshall: Well -- >> Potter Stewart: It was available to those
that was going to be mailed to, the university at every intention of mailing it that report,
as soon as it was printed to the addressees. >> Williams A. Marshall: Well, they have the
intention of mailing it as soon as it was mailed, not as soon as it was available because
someone would have to know -- somebody who let's say who is an information addressee
would have to know that quarterly -- >> Potter Stewart: Quarterly would be available?
>> Williams A. Marshall: Yes sir, because how else would they know where to go.
I mean -- >> Potter Stewart: University might change
his mind before they mailed it? >> Williams A. Marshall: Then if they put
out let's say an advance list saying that on May 1st we're going to have quarterly reports
1 through 7 available -- >> Potter Stewart: Yeah, but as a matter of
fact long before the printed reports were available on Miss Johnson's desk, the University
had every intention of mailing the reports out to those addressees?
>> Williams A. Marshall: That's right, but they weren't mailed until May 5th, which was
after the critical date. >> Warren E. Burger: Mr. Marshall, I am reading
the testimony of Mr. Waller and after acknowledging that Ms. Johnson had indeed described this
as a local library, he was then -- he qualified and said he will agree that it isn't a library,
it's a depository. He was asked how they named it, what they
called it, and he said it was the local reading room.
>> Williams A. Marshall: Yeah. That's right.
>> Warren E. Burger: Then a little later on, he was asked was the information concerning
the documents, and reports filed available? And he said yes, in what manner?
A card file which was maintained in publications office, which he later then said this thing
should be cataloged. Now that's certainly a classic example of
the fundamental function of libraries, isn't it?
>> Williams A. Marshall: I agree. I agree that from the standpoint of a principle/principal,
we're not we're talking about a principle here, but so far as the facts are concerned,
the facts are that there was not a publication. If as you say, the report had been prepared
my time is up Your Honor. If a report had been prepared, put into the
library and simultaneously therewith or beyond the critical date, a card made up, put into
an index, you would have a publication. You didn't have that situation here.
These were not available to the public. >> Warren E. Burger: Thank you.
>> Williams A. Marshall: I am sorry, I didn't get a chance to discuss Triplett.
>> John M. Harlan: Many cases in this Court are --
>> Williams A. Marshall: No sir. I am not.
>> John M. Harlan: (Inaudible) >> Williams A. Marshall: Relatively few Your
Honor. It's purely a matter of fact and you have
the District Court below and the Court of Appeals below finding that there was no publication.
>> John M. Harlan: It was the Eighth Circuit --
>> Williams A. Marshall: They didn't decide the question Your Honor.
It was up as a matter of a defense, but they as I mentioned before, they went off on 103.
Thank you very much. I am sorry, I didn't get to discuss Triplett.
>> Warren E. Burger: Mr. Faber. >> Sidney G. Faber: Mr. Chief Justice, may
it please the Court. Of the three questions presented in the petition
for writ of certiorari, namely the validity of the Isbell patent because it provided decisions,
secondly the so called fraud and the strictures on JFD for utilizing certain patent legends,
and certain patents in furthering its sales and three, the re-invocation of Graham against
Deere because the Court of Appeals in this case had said that the District Court had
not itself fully followed the formula, and set down in Graham against Deere with respect
to holdings of obviousness. JFD is of course primarily interested in number
three where JFD is charged with patent infringement. Number two, where JFD is charged with unfair
competition by itself and in cahoots with the very good the University of Illinois and
of course JFD is a licensee under the Isbell patent.
Now, the Blonder patent was brought into this Court on question three, when -- question
three as raised in the petition which was granted by this Court asked by the requirements
in the District Court, the due process and specific findings underlying the determination
of obviousness in patent causes as laid down by the Supreme Court in Graham against Deere
mandatory or just optional and ignorable. This question cited the strictures by the
Court of Appeals of the Seventh Circuit and the Trial Judge, which had said the District
Court did not describe the scope and content of the prior art, identified the differences
between the prior art and claimed no stake at the level of ordinary skill in the prior
art, something that the Seventh Circuit Court of Appeals did do.
However, we did not get the whole story in the petition, nor do we get the whole story
in the brief filed by the petitioner in which the petitioner says, page 63, the mere conclusion
by the District Court that claim five of the Blonder-Tongue patent was obvious at the time
it was made and is therefore invalid is entirely unsupported by any special or subsidiary facts.
The fact this however, that, that appearance of that one sentence all by itself in the
brief of the petitioner is the first sentence of a two-sentence paragraph.
And the second sentence of that two sentence paragraph by Judge Hoffman on Page 89 of the
record says, The alleged improvement was thwart by the following references in the prior art,
one technical point number 52, two the Mayes and his (Inaudible) the prior art patent cited.
They used the word obvious in that one sentence which I had read first and then he said it
was thwart by technical report number 52. The Court of Appeals Seventh Circuit as I
pointed out said they really wished that the Trial Judge had applied the rulings, the formula
prescribed in Graham against Deere, and then it itself tried to follow its own rulings
and it ended up by saying, page 70 of the record, If we understand its position correctly,
this is the Court of Appeals talking, Blonder-Tongue places chief reliance on the fact that while
Isbell teaches that the two planes in which the dipole elements lie are to be close enough
together, that the dipoles are substantially coplanar.
Blonder teaches that the planes maybe separated by some distance, but less than the wavelength
of the band. And the Court of Appeals went on, A substantial
separation of these planes is clearly shown, however, in the 1961 publication cited by
the court, that's quite below. Technical report number 52 of the Internal
Laboratories, that's at the University of Illinois.
So that we have certain circuits saying to Judge Hoffman, thou has not followed the rules
of Graham against Deere and then saying, but we apply the -- we do exactly the same thing
Judge Hoffman did. We find that technical report number 52 does
the job in toto. Now, where will you have, as you know Your
Honors, Section 102 of Patent Act says that if the invention is described in another printed
publication, it may not be patent then. Section 103 says that if it is obvious from
one or more prior patents in publications then on a showing that, that was beyond the
standing of ordinary skill, it maybe patented. And Graham against Deere pointed out that
when you are going to use 103, then as an appropriate administration of justice, so
that the decision can be understood, please explain.
And this Court itself gave an example of such explanation in a later case, Anderson -- I
fully believe that the Anderson-Black Rock Inc. against Pavement Salvage Co Inc. was
decided by this Court in the way it was -- they set forth a very succinct and complete example
of what the Court wanted when it said in Graham against Deere, that laid down the rules that
the various other courts would follow because this particular case there.
Now, when we turn however to the patent itself, and I asked those of you who are able to do
so, to turn to page 39 of this yellow book, the supplemental appendix where you'll find
a reproduction of an exhibit that wasn't produced until the -- at the trial.
This reproduction shows on the left side principal drawing of the Blonder-Tongue patent.
In the middle, the Claim 5, which is the only claim Blonder-Tongue has brought to this Court,
and on the left side there is technical report number 52 that had been referred to by Judge
Hoffman and had been referred to by the Court of Appeals and of course this chart draws
a relationship between the claim and each of the two disclosures, Blonder-Tongue and
the technical report. And you find that I don't want a pair of rigid
longitudinal conductors held spaced to predetermined vertical distance apart in a vertical plain,
is found in Blonder-Tongue of course, that's where the claim comes from, it is found in
this technical report number 52 which has been published early enough to be a reference,
there is no question there. First and second pluralities of dipole elements
lying in corresponding first and second vertically spaced horizontal plains containing the respective
conductors, it's there. Right down the line, the spacing, the dipoles
in separate plains, they are all there in each of these two things except one is a publication
antedating the filing date of the patent about more than a year, and the other is the patent
itself. However, you'll notice in this chart, on item
floor array, instead of being able to put in the statement that yes, this particular
strain relief appears in technical report number 52, we ought to say no, but and we
went to two references and let me explain a strain relief very, very briefly in the
simplest terms. When I have to change the electric plug in
the toaster in my kitchen, and knowing that my wife may well pull that plug out by the
cord rather than by the plug, that will tie a knot in the wire entering the hole in the
plug before I connect those two wires to the screws on that plug, and now if that plug
is pulled by the wire rather than by the plug, that knot that has been tied in the wire will
bear against the hole and we won't be pulling the contacts out.
So this strain relief is something that has existed from many years.
Blonder, who is one of the co-inventors here testified that the strain relief specifically
had existed from many, many years. The Court of Appeals said that Blonder admitted
that all the other mechanical elements were old but the only sum total of all the other
mechanical elements in this Claim 5 is this one item.
Blonder also testified and by the way, petitioner's brief makes much of the fact that Blonder
is a master of science type of person. Blonder is of course the moving spirit in
the petitioner, Blonder himself testified not only as an expert, but also testified
that the ranger 3 antenna put out by Blonder was made in accordance with Claim 5 which
is the only claim at issue in this patent. So when we look at the ranger 3 antenna, which
by coincidence happens to be not exactly coincidence, I must confess, happens to be opposite page
40 of the same yellow book. The ranger 3 antenna does not provide a strain
relief or a means of anchoring that lead in on the antenna.
So on page 2 of the brochure that goes along with the ranger 3, on second page, bottom
of the first column, there is an instruction to the installer, lab electricians tapper
around standoff as indicated by the dotted lines in B.
So the strain relief isn't on the Antenna when it is sold.
The standoff shown up there at the upper-right on Page 2b is a means of supporting or spacing
the lead-in from the vertical mass, and the vertical mass is not the antenna.
The antenna sits on the vertical mass, and this Ranger 3, which according to Mr. Blonder
was made in accordance with claim 5 of his patent, that is so without this strain relief,
but sold within an instruction, put some tape around this bottom.
So when Judge Hoffman said, in the second sentence of that paragraph I read to you,
when Judge Hoffman said that it is thwart, that was the end of it.
He is either right or wrong, and having said it is thwart by Technical Board-52, if it
is thwart, perhaps he might have said, yes, just while looked at a picture of myself,
said, yes, it's got a nose, yeah, it's got two eyes, yes, it has hair, not too much hair.
But, when he says it's thwart, he is making a statement and when you take -- when in a
later case or another judge should want to see what the basis for the decision was and
simply gets a xerox copy of that reference. And when the Court of Appeals said it is thwart
except for some mechanical elements which Blonder admitted to be old, those mechanical
elements added up to all of that single unit, the strain relief.
Now, I have a few seconds left. In considering Question number 2, the charges
of fraud, what nasty people JFD was, how JFD either let the Illinois, University of Illinois
down the garden path, the vis-a-vis, I don't know, just keep in mind that when you read
these charges, every single one of them is an allegation and every single one of them
without a single exception is not supported by proof.
In the time left to me, let me just take up a few of them.
Number 1, JFD raided the Blonder-Tongue employees. In the period that JFD was supposed to have
raided the Blonder-Tongue employees, stolen them all away, 100 employees left Blonder-Tongue,
5 of those who had left came to JFD. When Mr. Blonder was asked to list all of
the antenna manufacturers, I think he was able to list six or seven, maybe there are
10 or 12 or 15 throughout the country, and why did as many as fired, 120 of those who
left come to JFD. Well, Blonder-Tongue is located in New York,
JFD is located in Brooklyn, and I am sorry to say that not too many people want to live
in New York, I am sorry, Mr. Justice Brennan, [Laughter] and not too many people want to
live in Brooklyn, and when somebody is living in Westchester, on Long Island, he can commute
almost as inconveniently to either place. In other words, there was proximity, and we've
got -- and JFD got 120 of those who left. Mr. Ballash (ph), Blonder says was given the
job of keeping tabs on JFD. Not only keeping tabs on JFD, he was supposed
to be really fully in charge according to the allegations of the whole antenna division
of Blonder. The general manager of Blonder-Tongue testified
that Mr. Ballash was a very angry man who left -- who complained for many years was
reduced gradually in rank and finally left two years -- a-year-and-a-half before the
trial. Thank you.
>> Warren E. Burger: You have seven minutes left.
>> Robert H. Rines: Thank you Mr. Chief Justice. Well on that subject, my brother failed to
tell you that even the District Court found that when Mr. Ballash, the head of our whole
antenna program left, all of the records at Blonder-Tongue dealing with the customer relations,
and the investigation that Mr. Balllsh was making for this very suit for the pleading,
mysteriously disappeared. I think also we should bring out who are these
key people that were raided. You cannot compare the fact that in a factory
you let so many people go when you have production and so many people come back.
It's not a numbers game for raiding. They took the head of the antenna business.
They took all of our proofs and records with regard to the customers.
They took our co-inventor of the Blonder patent who was going to testify about the infringement.
He took all the tests, and this was taken just before the trial maybe a month or so
before. In addition, we had one bit of evidence on
the West coast about customers. They took away just before the trial Mr. Sisson
(ph), our West coast sales representative, so we couldn't use him as a witness.
So I don't think raiding is a numbers game. >> Byron R. White: (Inaudible) Petitioner
decided finally to forgo any request for reconsidering Triplett entirely or in any part.
I had understood you previously say you would welcome a modification of it to some extent?
>> Robert H. Rines: Your Honor I think that is correct.
The question that was asked of us in our brief by this Court was should Triplett be overruled?
That we answered no. Now, the question is should there be modification?
I think in all of law where somebody is abusing it or somebody is not taking advantage of
what is intended by something, there are exceptions. Now, I think the Solicitor is very close to
us in the idea that, if in fact this was the same trial and they had the opportunity to
present their witnesses before and they didn't do it, that seriously it ought be considered
whether there be and estoppel in a situation such this.
>> Potter Stewart: You of course didn't interpose that as a defense understandably?
>> Robert H. Rines: No we did not. Understandably we didnt have the decision
at the time of the pleading. >> Potter Stewart: Alright.
>> Robert H. Rines: The last thing I would like to bring out is on this matter of obviousness
just a quote from page 499, the experimental results which have been obtained from the
multi-element log periodic antennas are found to be predictable and a few sentences later,
an investigation of log periodic structures of thin linear elements, that's Isbell, is
planned. What's that from?
The antenna report of the antenna laboratories of the University of Illinois, 30th of January,
1959 at the time that Isbell made his so called invention, that's the disclosure of the invention.
Predictability in their words before litigation, not now, and not in the Eighth Circuit, yes.
I lastly like to plead with this Court that the Solicitor General has done a very gracious
thing I think in presenting a balanced picture on Triplett v. Lowe.
I want to read from the top of page 32 of his brief, and this is what a Solicitor General
is for I think. It is as important that sound patents and
invention be rewarded as that the public be protected against bad monopolies based on
insufficient invention. Both are strong public policies, please, please
restore to the patentee, his right to due process in the Federal Courts of America.
Thank you. >> Warren E. Burger: Thank you gentlemen.
The case is submitted.