BLONDER-TONGUE v. UNIVERSITY FOUNDATION

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Argument of Robert H. Rines

Chief Justice 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.

Mr. 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 you’ve 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 who’d 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 couldn’t set a time for postponement, 19th, 20th and 21st, we still didn’t 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.

Justice Potter Stewart: The trial had originally been set in October or November, hadn't it?

Mr. Robert H. Rines: It had been set several times, but then was postponed Mr. Justice Potter, until December 18th.

Justice Potter Stewart: What caused the postponement?

Mr. Robert H. Rines: The prior trial of Judge Hoffman had not been finished.

Justice Potter Stewart: I beg your pardon.

Mr. Robert H. Rines: A prior trial of the District Court had had not been finished, so it was postponed to December 18th.

Justice Potter Stewart: Just one continuance?

Mr. 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 we’re 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.

Justice Byron R. White: How about in the Eighth Circuit, had you had oral testimony?

Mr. Robert H. Rines: Yes, there was.

The other side, the defendant had a right and did produce an expert and the court --

Justice Byron R. White: Did you?

Mr. Robert H. Rines: Wasn’t in that.

No, I'm a different defendant.

Justice Byron R. White: That’s alright.

Oh!

Yes, the have defendant there did, yes.

Mr. Robert H. Rines: Yes he did sir.

Justice Byron R. White: Yes.

Mr. 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.

Chief Justice 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?

Mr. Robert H. Rines: So far as the documents are concerned --

Chief Justice Warren E. Burger: Well, documents --

Mr. 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.

Chief Justice Warren E. Burger: So that it’s not the same record in the broad sense of that word?

Mr. Robert H. Rines: No, it is not Mr. Chief Justice.

In addition, in --

Justice John M. Harlan: But you're not asking for Triplett to be overruled?

Mr. 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 we’re 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 plaintiff’s 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 --

Justice Harry A. Blackmun: Mr. Rines, I want to be sure the so-called Mayes patent is not an issue now, here?

Mr. 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, that’s 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 wasn’t 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 1950’s, at the University of Illinois.

It’s 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, that’s a log-width variation, that’s 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 didn’t do with the simple single wire.

They did it of what he calls “teeth.”

You see this a little a triangular teeth and they didn’t 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, that’s 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. DuHamel’s 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, we’re 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. Isbell’s 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 Isbell’s trivial change was an experiment but not something that was unobvious to those skilled in the art.

Justice 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?

Mr. 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.

Justice Harry A. Blackmun: In the Southern District of Iowa, then?

Mr. Robert H. Rines: Excuse me?

Justice Harry A. Blackmun: In the Southern District of Iowa?

Mr. Robert H. Rines: That’s right Judge Blackmun.

Justice Byron R. White: Well, I don’t -- let's assume that the result of an experiment is not obvious when it isn’t 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.

Mr. Robert H. Rines: You’re absolutely right, Mr. Justice White.

Justice Byron R. White: Now, I don’t suppose unpredictability (Voice Overlap)

Mr. Robert H. Rines: It’s 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 it’s unobvious.

Now, the Court of Appeals in Eighth Circuit said, “That’s not the test, its obviousness not predictability.”

They said, “If it will be obvious for a skilled person what to try even when you don’t know everything that is going to happen once you try it.”

If you’d be led by the trier to try this thing, then that is not obvious because it was unpredictable.

Justice Byron R. White: Is this a pretty good law then in other cases?

Mr. Robert H. Rines: I haven’t 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.

It’s 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 isn’t 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 weren’t obvious.

He didn’t 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 wasn’t 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 wasn’t obvious.

Now, in his cross-examination, Dr. DuHamel, witness for the University of Illinois admitted what I hold in my hand here which is defendant’s exhibit 24 is a correct representation of what he described in his prior patent, prior to Isbell, it’s 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 doesn’t 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 couldn’t 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 can’t 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 it’s 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 isn’t coplanar and doesn’t even do the same thing is improper, and that --

Justice Hugo L. Black: And that do say.

Mr. Robert H. Rines: This is the Blonder-Tongue, Blonder-Shinto patent in our counterclaim.

Justice Hugo L. Black: What's the other claim?

Mr. Robert H. Rines: The Isbell patent of the University of Illinois.

Justice Hugo L. Black: Did he just pick out?

Mr. Robert H. Rines: No, this is also made in accordance with the Blonder-Tongue patent.

In other words, these are in two different planes.

Justice Hugo L. Black: Do you have the Isbell patent there?

Mr. Robert H. Rines: I do, Your Honor.

We don’t 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.

Justice Hugo L. Black: Is that supposed to be the invention?

Mr. Robert H. Rines: Yes, Your Honor.

They stress this throughout the patent.

They must be in the same plane and the reason --

Justice Hugo L. Black: Can you put closer together?

Mr. Robert H. Rines: Very close together as close together as you can get it.

Justice Hugo L. Black: And that's the whole claim?

Mr. Robert H. Rines: That’s their whole claim, coplanar antennas in one plane shaped for these wires in this taper-shaped log width mic shape we talked about.

Justice Hugo L. Black: Does shape have anything to do with it or is it closeness together?

Mr. 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 I’ve shown to you and that spacing is taper, put those three things together and that's Isbell so-called invention.

Justice Hugo L. Black: And what's the difference in that in the other one?

Mr. 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.

Justice Hugo L. Black: When you get down to it, the difference is the closeness of these rods to each other?

Mr. Robert H. Rines: That will be the difference, yes Your Honor.

Now, the Patent Office was --

Justice Potter Stewart: Now, this device down at the table to your left, is that the --

Mr. Robert H. Rines: Blonder-Tongue.

Justice Potter Stewart: Is that the subject of your counterclaim?

Mr. Robert H. Rines: This is the subject of the accused infringement.

Justice Potter Stewart: How about your counterclaim?

Mr. Robert H. Rines: Since, we file -- since our patent came out, they’ve copied it.

So, they have antennas just like this.

Justice Potter Stewart: Well, I'm asking, what was the --

Mr. Robert H. Rines: Just like this Your Honor.

Justice Potter Stewart: (Voice Overlap) your counterclaim for patent infringement?

Mr. Robert H. Rines: Just like this Your Honor.

Justice Potter Stewart: There was.

Mr. Robert H. Rines: Yes, Your Honor.

Justice Byron R. White: And that Isbell is endowed for the lack of invention, I suppose Blonder-Tongue is too?

Mr. Robert H. Rines: I don’t think we have a strong patent Mr. Justice White, but I do think that we’re entitled to have a trial on it.

Justice Byron R. White: But you think if Isbell is valid, yours ought to be?

Mr. Robert H. Rines: No, I don’t 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.

Justice Byron R. White: Do you mean you're conceding that Isbell’s patent is valid, yours infringe it?

Mr. Robert H. Rines: If Isbell’s patent were valid, yes Your Honor.

This antenna device would infringe it, no question about that.

Justice Hugo L. Black: Do you say they tried to capture all of it by getting the rods closer together or further apart?

Mr. Robert H. Rines: No, they tried to capture by their claim language Mr. Justice Black.

They don’t say in the patent --

Justice Hugo L. Black: When they get through, what is the physical thing there?

Mr. Robert H. Rines: Oh!

The physical thing they have is antennas all in one plane and that’s the way they built it until Blonder came and showed a way that you didn’t 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.

Justice Byron R. White: Well, unobvious from Isbell maybe but --

Mr. Robert H. Rines: Maybe obvious to one skilled in the art.

I'm not going to pretend we got the world’s 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 it’s 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 what’s he is suppose to do.

Justice Harry A. Blackmun: Mr. Rines, bring me along now, did Isbell’s patent antedate yours?

Mr. Robert H. Rines: Oh!

Yes.

He’s a pioneer compared to us.

Justice 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?

Mr. 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 Isbell’s patent, we don’t infringe.

We deliberately get a way from putting it in the same plane.

Does that make that clear?

Justice 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?

Mr. Robert H. Rines: Well, if I said that, I didn’t 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 Isbell’s patent but that isn’t Isbell’s patent.

Justice Byron R. White: But if you construe obviousness or nonobviousness the way you want us to, it sounds to me like your patent isn’t a very strong as you say.

Mr. Robert H. Rines: I admit that.

I just would like the right to try my patent in a Courts of America.

It’s presumed valid, I’d like the right to trial.

Justice John M. Harlan: Well, you better address yourself to publication issue.

Mr. 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 Isbell’s 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 --

Justice John M. Harlan: And Ms. Johnson’s operations?

Mr. Robert H. Rines: Ms. Johnson’s 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 --

Justice Hugo L. Black: Where is the library?

Mr. 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.

Justice John M. Harlan: How would you characterize in the laws it’s just the lower court as to what standard of publication is?

Mr. 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 don’t think it’s a real library; it’s a tiny place in the university.

Justice Hugo L. Black: But what’s the heading on the door?

Mr. Robert H. Rines: I beg your pardon.

Justice Hugo L. Black: What's the heading on the door?

Mr. Robert H. Rines: It’s 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.

I’d 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, we’re 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.

We’re 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 couldn’t 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, that’s 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 it’s in the record that if they barred any of Blonder-Tongue’s line they wouldn’t sell them their patented antennas.

And we maintain that the District Court in picking all these little things and saying, well, you haven’t prove this enough, didn’t 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 didn’t 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 General’s points on Triplett v. Lowell and what my brother might have to say about these issues.

Chief Justice Warren E. Burger: Very well.

Mr. McLaren.

Argument of Mclaren

Mr. 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 Government’s 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 it’s 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.

It’s fair to say it’s 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, it’s 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, it’s 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 it’s fair to say that this would be contrary to the policy stated by the Court in the recent Lear v. Adkins case.

Justice 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 --

Mr. Mclaren: I would think it is --

Justice 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.

Mr. 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 don’t think that this Court is bound by the grounds which the parties assert when they come up here and invoke the court’s power.

Justice Byron R. White: Mr. McLaren, I thought I understood Mr. Rines to say that he thought perhaps he wasn’t 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, that’s what I understood, maybe I'm wrong?

Mr. 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 don’t 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.

Justice John M. Harlan: But nevertheless, in view of the position of the parties, at least as taken in their briefs, what you’re suggesting we do is sua sponte ourselves to overrule the prior decisions of this Court (Inaudible) without argument by the Court?

Mr. 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 --

Justice John M. Harlan: Why do a litigation in which that issue is put to us by the parties?

Mr. 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.

Justice Hugo L. Black: Has it been up in Congress before?

Mr. 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, it’s appropriate for the Court to develop the changes insofar as they apply in the patent field.

Justice Hugo L. Black: Does the Triplett rule rests in all of the statute or is it all together a judicial creation?

Mr. 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 --

Justice Hugo L. Black: Supposing we should agree with you, what would be the effect on this case?

Mr. 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 didn’t present Dr. DuHamel’s testimony for example on the first trial then I would think that the trial judge should adhere to it.

Chief Justice 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 didn’t 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?

Mr. 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.

Chief Justice Warren E. Burger: I have to clear that up in his rebuttal.

Mr. Mclaren: Yes.

Justice Potter Stewart: Of course the Court of Appeals here for the Seventh Circuit, I'm looking at page 85 of the appendix, I don’t 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.

It’s -- I don’t 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.

Mr. Mclaren: I read that to mean that, but for the Triplett rule would have followed the Eighth Circuit, Justice Stewart.

Justice Potter Stewart: Well, of course now you read into this.

Mr. 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.

Justice Potter Stewart: Yes, I saw that quotation in your brief.

Mr. 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.

Chief Justice Warren E. Burger: Mr. Marshall.

Argument of Williams A. Marshall

Mr. 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 wasn’t 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 we’re up here.

We -- if I will -- if I’ll get a chance I’d 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 we’re 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 couldn’t 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.

Justice 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 they’re together.

So you separate them until you don’t get a blurred signal, could that be an invention?

Mr. 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 wouldn’t 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 don’t 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 doesn’t 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 doesn’t 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 don’t 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.

Justice Potter Stewart: This could even talk about the cable antenna which was --

Mr. 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 --

Justice Potter Stewart: That was in the prior art that --

Mr. 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.

Justice Potter Stewart: (Voice Overlap) the cable was disclosed in the application?

Mr. 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.

Justice Potter Stewart: All of these antennas are antennas you put on the rooftop rather than on your set?

Mr. 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.

Justice Potter Stewart: That doesn't make a real difference whether it's from top or --

Mr. 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.

Chief Justice Warren E. Burger: You say concurrent, you mean the district judges in each of the two circuits or the --?

Mr. 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.

Justice 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)

Mr. Williams A. Marshall: That is in the test.

The test is intention to publish, the test is intention to publish.

Justice Potter Stewart: Is it Sixth Circuit opinion you are relying on primarily, the language of that?

Mr. Williams A. Marshall: Yes sir, that's right.

Justice Potter Stewart: Thompkins or whatever it is?

Mr. Williams A. Marshall: Yes sir.

No, that's the Massengill case as one of them.

Justice John M. Harlan: What is the intention Mr. Marshall?

Mr. 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.

Justice Potter Stewart: What if this had been in library though?

You would say it would still hold true (Voice Overlap)

Mr. 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.

Justice Potter Stewart: So that if this were a library, there would have been publication?

Mr. 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.

Justice John M. Harlan: That was not the policy?

Mr. Williams A. Marshall: That was not the policy of the University of Illinois.

Justice John M. Harlan: You say there is intention to publish, what do you mean by that?

An Intention to publish --

Mr. Williams A. Marshall: Yes sir.

Justice John M. Harlan: As distinguished from (Inaudible)

Mr. 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.”

Chief Justice Warren E. Burger: Was it indexed, so that if someone who came to look through an index, they would try a lead to it?

Mr. Williams A. Marshall: Not at that time, no sir.

Eventually, it would have been.

Chief Justice Warren E. Burger: Do you think that would make a difference?

Mr. Williams A. Marshall: Oh, I think it would.

Yes sir.

Justice 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 --

Mr. 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.

Justice Thurgood Marshall: It wouldn't be as defected as just put it in envelope and mail it to them?

Mr. Williams A. Marshall: No sir.

Chief Justice 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?

Mr. Williams A. Marshall: Yes sir.

Chief Justice Warren E. Burger: Why should that relate back to the intent of the person who sent it?

Mr. 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.

Justice Hugo L. Black: if it wasn't a library --

Mr. Williams A. Marshall: Pardon me sir.

Justice Hugo L. Black: If that wasn't a library, what was it?

Mr. 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.

Justice Hugo L. Black: What was the lady's occupation?

Mr. 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

Justice Hugo L. Black: Secretary to whom?

Mr. 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.

Justice John M. Harlan: What was Waller's testimony --

Mr. 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.

Justice Potter Stewart: And that was on May 5th 1959?

Mr. Williams A. Marshall: Yes sir.

Which was --

Justice Potter Stewart: And it is not cleared all, that this document was even in that so called library and --

Mr. 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.

Justice John M. Harlan: You say that availability is synonymous with intention of publishing, I mean that's the intention?

Mr. Williams A. Marshall: Well available to the public.

Justice John M. Harlan: Available to the public?

Mr. Williams A. Marshall: Yes sir.

Justice Potter Stewart: Well, it need not to be the general public.

Mr. Williams A. Marshall: No sir.

Justice Potter Stewart: It could be the scientific community or a restricted segment of the public.

It need not to be the general public?

Mr. Williams A. Marshall: No sir.

Justice John M. Harlan: What does this really mean --

Mr. 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 --

Justice Potter Stewart: What if in April, the reports had been mailed out to those so called correspondents?

Mr. Williams A. Marshall: Then we would have a problem.

Justice Potter Stewart: What?

Mr. Williams A. Marshall: We would have a problem.

Justice Potter Stewart: You'd have a problem?

Mr. Williams A. Marshall: Yes sir.[Laughter]

Justice Potter Stewart: Now, what if – what if the correspondents came in on the day before they were mailed and asked for one?

Mr. 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.

Justice Potter Stewart: But, it was available to the addressees?

Mr. Williams A. Marshall: Well --

Justice 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.

Mr. 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 --

Justice Potter Stewart: Quarterly would be available?

Mr. Williams A. Marshall: Yes sir, because how else would they know where to go.

I mean --

Justice Potter Stewart: University might change his mind before they mailed it?

Mr. 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 --

Justice 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?

Mr. Williams A. Marshall: That's right, but they weren't mailed until May 5th, which was after the critical date.

Chief Justice 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.

Mr. Williams A. Marshall: Yeah.

That's right.

Chief Justice 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?

Mr. 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.

Chief Justice Warren E. Burger: Thank you.

Mr. Williams A. Marshall: I am sorry, I didn't get a chance to discuss Triplett.

Justice John M. Harlan: Many cases in this Court are --

Mr. Williams A. Marshall: No sir.

I am not.

Justice John M. Harlan: (Inaudible)

Mr. 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.

Justice John M. Harlan: It was the Eighth Circuit --

Mr. 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.

Chief Justice Warren E. Burger: Mr. Faber.

Argument of Sidney G. Faber

Mr. 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.

Chief Justice Warren E. Burger: You have seven minutes left.

Rebuttal of Robert H. Rines

Mr. 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.

Justice 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?

Mr. 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.

Justice Potter Stewart: You of course didn't interpose that as a defense understandably?

Mr. Robert H. Rines: No we did not.

Understandably we didn’t have the decision at the time of the pleading.

Justice Potter Stewart: Alright.

Mr. 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.

Chief Justice Warren E. Burger: Thank you gentlemen.

The case is submitted.