Bryan W. Nickerson, Jr. v. Josef Kutschera, A. G. Berkinruth, the Tidewater Oil Company

419 F.2d 983, 164 U.S.P.Q. (BNA) 231, 1969 U.S. App. LEXIS 9561

Opinions

OPINION OF THE COURT

PER CURIAM.

This case is an appeal from the District Court order of January 22, 1969 (1) dismissing, with prejudice, an action for infringement of a patent which had previously been held invalid by the United States Court of Appeals for the Sixth Circuit, see Nickerson v. Bearfoot Sole Company, 311 F.2d 858 (6th Cir.), cert. den. 375 U.S. 815, 84 S.Ct. 48, 11 L.Ed. 2d 50, rehearing den. 375 U.S. 949, 84 S.Ct. 343, 11 L.Ed.2d 279 (1963), and (2) entering final judgment for defendants under F.R.Civ.P. 54(b). The history of this present litigation may be found in Nickerson v. Kutschera, 390 F. 2d 812 (3rd Cir. 1968). After the record was returned to the District Court as a result of that decision, the District Court found, after reviewing the material revealed during the discovery process, that there was in fact no “new evidence” ¹ different from that before the Sixth Circuit when it decided Bearfoot Sole, supra, and adopted the rule that in patent cases:

“* * * all issues determined in the first action should be binding in a different cause of action and should not be allowed to be relitigated upon any-ground whatever, absent fraud or some other factor invalidating the judgment in the first action.”

We are no more willing to disregard a ruling of the Supreme Court of the United States on this record now than we were in March of 1968 when this case was previously before this court. In Triplett v. Lowell, 297 U.S. 638, 56 S.Ct. 645, 80 L.Ed. 949 (1936), that Court held:

“Neither reason nor authority supports the contention that an adjudication adverse to any or all the claims of a patent precludes another suit upon the same claims against a different defendant. While the earlier decision may by comity be given great weight in a later litigation and thus persuade the court to render a like decree, it is not res adjudicata and may not be pleaded as a defense.” Id. at 642, 56 S.Ct. at 647.²

It would seem clear that the court expected that “great weight” may be given to the “earlier decision” in the light of all the evidence on the patent’s validity and there is no showing that the District Court considered the trial record in the former litigation. We continue to believe that such change as may be desirable in this exception in patent cases to the general rule of collateral estoppel should be made, on a record such as this, by the Supreme Court itself or by Congress, which so far has refused to change the rule in Triplett. In this regard, it is noted that, while the original version of the “Patent Reform Act of 1967” ³ introduced in the Senate contained a section providing for collateral estoppel in patent cases,⁴ the present version of that Bill ⁵ has deleted this so-called “in rem invalidity” clause.

For the above reasons, the judgment of the District Court will be reversed and the case remanded for disposition on the merits in accordance with this opinion.

Footnotes

1

. Although the docket entries call the proceeding on October 16, 1968, a “hearing” and defendants never had the reporter’s notes taken at that proceeding transcribed (see Document 44), it seems clear that such proceeding was an argument on the Motion to Dismiss (Document 39) and no opportunity for offering testimony was afforded plaintiff (see Document 40, Motion for Trial, and Document 41, being order of 7/15/68 denying that Motion).

When the case was previously pending before this court (No. 16,651), counsel for defendants first advised the court that the District Court “specifically asked Mr. Nickerson during the hearing whether he had additional evidence supporting validity” (letter of 12/21/67) and subsequently, after reviewing the transcript of the hearing, wrote that “The Court did not expressly ask Mr. Nickerson whether he had any new evidence to present” (letter of 2/5/68). It is not necessary to decide plaintiff’s contention that pertinent information in the exhibits and answers to interrogatories before the court at the October 1968 hearing was not available to him within a year of the final judgment in Civil No. 34,813, N.D.Ohio (cf. F. R.Civ.P. 60(b)), since our previous opinion made clear that there were two considerations which required that the case be reversed and remanded. The second consideration is referred to at 390 F.2d 815 and in the second paragraph of this opinion.

2

. We can find nothing in Lear, Inc. v. Adkins, 395 U.S. 653, 89 S.Ct. 1902, 23 L. Ed.2d 610 (1969), cited by defendants during oral argument, to qualify the quoted language. In that case, the court used this language at pages 670-671, 89 S.Ct. at page 1911, thereby emphasizing that public interest considerations in patent litigation made it undesirable to apply automatically principles recognized in other civil cases :

“We think it plain that the technical requirements of contract doctrine must give way before the demands of the public interest in the typical situation involving the negotiation of a license after a patent has issued.”

3

. S. 1042, 90th Cong., 1st Sess. (1967).

4

. See S. 1042, 90th Cong., 1st Sess. § 294 (1967).

5

. See S. 1246, 91st Cong., 1st Sess. (1969).