Blonder Tongue v. University of Illinois Foundation

U.S. Supreme Court Blonder Tongue v. University of
Illinois Found., 402
U.S. 313 (1971) Blonder Tongue Laboratories, Inc.
v. University of Illinois
Foundation No. 338 Argued January 14,
1971 Decided May 3, 1971 402
U.S. 313 CERTIORARI TO THE UNITED STATE
COURT OF APPEALS FOR THE SEVENTH
CIRCUIT Syllabus This Court's holding in Triplett v. Lowell, 297 U. S. 638 ,
that a determination of patent invalidity is not res
judicata against the patentee in subsequent litigation against
a different defendant overruled to the extent that it forecloses an
estoppel plea by one facing a charge of infringement of a patent
that has once been declared invalid, and in this infringement suit,
where, because of Triplett, petitioner did not plead
estoppel and the patentee had no opportunity to challenge the
appropriateness of such a plea, the parties should be allowed to
amend their pleadings and introduce evidence on the estoppel issue.
Pp. 402 U. S.
317 -350.

															422 F.2d 769, vacated and remanded.

															WHITE, J., delivered the opinion for a unanimous Court. Page 402 U. S. 314 MR. JUSTICE WHITE delivered the opinion of the Court.

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

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

															"it would have been obvious to one ordinarily skilled in the art
and wishing to design a frequency independent unidirectional Page 402 U. S. 315 antenna to combine these three old elements, all suggested by
the prior art references previously discussed." University of Illinois Foundation v. Winegard
Co., 271 F.
Supp. 412 , 419 (SD Iowa 1967) (footnote omitted). [ Footnote 3 ] Accordingly, he entered
judgment for the alleged infringer and against the patentee. On
appeal, the Court of Appeals for the Eighth Circuit unanimously
affirmed Judge Stephenson. 402 F.2d 125 (1968). We denied the
patentee's petition for certiorari. 394 U.S. 917 (1969).

															In March, 1966, well before Judge Stephenson had ruled in the Winegard case, the Foundation also filed suit in the
Northern District of Illinois charging a Chicago customer of
petitioner, Blonder-Tongue Laboratories, Inc. (hereafter B-T), with
infringing two patents it owned by assignment: the Isbell patent
and U.S. Patent No. Re. 25,740, reissued March 9, 1965, to P. E.
Mayes et al. The Mayes patent was entitled "Log Periodic
Backward Wave Antenna Array," and was, as indicated, a reissue of
No. 3,108,280, applied for on September 30, 1960. B-T chose to
subject itself to the jurisdiction of the court to Page 402 U. S. 316 defend its customer, and it filed an answer and counterclaim
against the Foundation and its licensee, respondent JFD Electronics
Corp., charging: (1) that both the Isbell and Mayes patents were
invalid; (2) that, if those patents were valid, the B-T antennas
did not infringe either of them; (3) that the Foundation and JFD
were guilty of unfair competition; (4) that the Foundation and JFD
had violated the "anti-trust laws of the United States, including
the Sherman and Clayton Acts, as amended"; and (5) that certain JFD
antenna models infringed B-T's patent No. 3,259,904, "Antenna
Having Combined Support and Lead-In," issued July 5, 1966.

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

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

															App. 73. Page 402 U. S. 317 B-T appealed, and the Court of Appeals for the Seventh Circuit
affirmed: (1) the findings that the Isbell patent was both valid
and infringed by B-T's products; (2) the dismissal of B-T's unfair
competition and antitrust counterclaims; and (3) the finding that
claim 5 of the B-T patent was obvious. However, the Court of
Appeals reversed the judgment insofar as Judge Hoffman had found
the Mayes patent valid and enforceable, enjoined infringement
thereof, and provided damages for such infringement. 422 F.2d 769
(1970).

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

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

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

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

															"Neither reason nor authority support the contention that an
adjudication adverse to any or all the claims of a patent precludes
another suit upon the same claims against a different defendant.
While Page 402 U. S. 318 the earlier decision may, by comity, be given great weight in a
later litigation, and thus persuade the court to render a like
decree, it is not res adjudicata, and may not be pleaded
as a defense."

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

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

															"would seem sound judicial policy that the adjudication of [the
question of the Isbell patent's validity] against the Foundation in
one action where it was a party would provide a defense in any
other action by the Foundation for infringement of the same
patent."

															422 F.2d at 772. [ Footnote
5 ] Page 402 U. S. 319 In its brief here, the Foundation urges that the rule of Triplett be maintained. Petitioner B-T's brief took the
same position, stating that,

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

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

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

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

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

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

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

															Tr. of Oral Arg. 7-8. Page 402 U. S. 320 In light of this change of attitude from the time petitioner's
brief was filed, we consider that the question of modifying Triplett is properly before us. [ Footnote 6 ] II Triplett v. Lowell exemplified the judge-made doctrine
of mutuality of estoppel, ordaining that, unless both parties (or
their privies) in a second action are bound by a judgment in a
previous case, neither party (nor his privy) in the second action
may use the prior judgment as determinative Page 402 U. S. 321 of an issue in the second action. Triplett was decided
in 1936. The opinion stated that "the rules of the common law
applicable to successive litigations concerning the same subject
matter" did not preclude "relitigation of the validity of a patent
claim previously held invalid in a suit against a different
defendant." 297 U.S. at 297 U. S. 644 .
In Bigelow v. Old Dominion Copper Co., 225 U.
S. 111 , 225 U. S. 127 (1912), the Court had stated that it was "a principle of general
elementary law that the estoppel of a judgment must be mutual."
[ Footnote 7 ] The same Page 402 U. S. 322 rule was reflected in the Restatement of Judgments. Restatement
of Judgments § 93 (1942). [ Footnote
8 ]

															But even at the time Triplett was decided, and
certainly by the time the Restatement was published, the mutuality
rule had been under fire. Courts had discarded the requirement of
mutuality and held that only the party against whom the plea of
estoppel was asserted had to have been in privity with a party in
the prior action. [ Footnote 9 ]
As Judge Friendly has noted, Bentham had attacked Page 402 U. S. 323 the doctrine

															"as destitute of any semblance of reason, and as 'a maxim which
one would suppose to have found its way from the gaming table to
the bench.' . . ." Zdanok v. Glidden Co., 327 F.2d 944, 954 (CA2 1964), cert. denied, 377 U.S. 934 (1964) (quoting 3 J. Bentham,
Rationale of Judicial Evidence 579 (1827), reprinted in 7 Works of
Jeremy Bentham 171 (J. Bowring ed. 1843)). There was also ferment
in scholarly quarters. [ Footnote
10 ]

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

															"no compelling reason . . . for requiring that the party
asserting the plea of res judicata must have been a party,
or in privity with a party, to the earlier litigation." Id. at 812, 122 P.2d at 894. Justice Traynor's opinion,
handed down the same year the Restatement was published, listed
criteria since employed by many courts in many contexts:

															"In determining the validity of a plea of res judicata three questions are pertinent: was the issue decided in the prior
adjudication identical with the one presented in the action in
question? Was there a final judgment on the merits? Was the party
against whom the plea is asserted a party or in Page 402 U. S. 324 privity with a party to the prior adjudication?"

															19 Cal. 2d at 813, 122 P.2d at 895. Although the force of the
mutuality rule had been diminished by exceptions and Bernhard itself might easily have been brought within one
of the established exceptions, "Justice Traynor chose instead to
extirpate the mutuality requirement and put it to the torch."
Currie, Civil Procedure: The Tempest Brews, 53 Calif.L.Rev. 25, 26
(1965). Bernhard had significant impact. Many state and federal
courts rejected the mutuality requirement, especially where the
prior judgment was invoked defensively in a second action against a
plaintiff bringing suit on an issue he litigated and lost as
plaintiff in a prior action. [ Footnote 11 ] The trend has been apparent in federal
question cases. [ Footnote
12 ] The federal courts found Bernhard persuasive. As
Judge Hastie stated more than 20 years ago:

															"This second effort to prove negligence is comprehended by the
generally accepted precept that a party who has had one fair and
full opportunity to prove a claim and has failed in that effort
should not be permitted to go to trial on the merits of that claim
a second time. Both orderliness and reasonable time saving in
judicial administration require that Page 402 U. S. 325 this be so unless some overriding consideration of fairness to a
litigant dictates a different result in the circumstances of a
particular case."

															"The countervailing consideration urged here is lack of
mutuality of estoppel. In the present suit, [the plaintiff] would
not have been permitted to take advantage of an earlier affirmative
finding of negligence, had such finding been made in [his first
suit against a different defendant]. For that reason he argues that
he should not be bound by a contrary finding in that case. But a
finding of negligence in the [plaintiff's first suit] would not
have been binding against the [defendant in a second suit] because
[that defendant] had no opportunity to contest the issue there. The
finding of no negligence, on the other hand, was made after full
opportunity to [plaintiff] on his own election to prove the very
matter which he now urges a second time. Thus, no unfairness
results here from estoppel which is not mutual. In reality, the
argument of [plaintiff] is merely that the application of res
judicata in this case makes the law asymmetrical. But the
achievement of substantial justice, rather than symmetry, is the
measure of the fairness of the rules of res judicata. " Bruszewski v. United States, 181 F.2d 419, 421 (CA3
1950), cert. denied, 340 U.S. 865 (1950). Many federal
courts, exercising both federal question and diversity
jurisdiction, are in accord unless in a diversity case bound to
apply a conflicting state rule requiring mutuality. [ Footnote 13 ] Page 402 U. S. 326 Of course, transformation of estoppel law was neither
instantaneous nor universal. As late as 1961, eminent authority
stated that

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

															Moore & Currier, Mutuality and Conclusiveness of Judgments,
35 Tul.L.Rev. 301, 304 (1961) (footnotes omitted); see
also, 1B J. Moore, Federal Practice �0.412[1], pp 1803-1804
(1965). However, in 1970, Professor Moore noted that "the trend in
the federal courts is away from the rigid requirements of mutuality
advocated herein." Id. Supp. 1970, at 53. The same trend
is evident in the state courts. [ Footnote 14 ] Page 402 U. S. 327 Undeniably, the court-produced doctrine of mutuality of estoppel
is undergoing fundamental change in the common law tradition. In
its pristine formulation, an increasing number of courts have
rejected the principle as unsound. Nor is it irrelevant that the
abrogation of mutuality has been accompanied by other developments
-- such as expansion of the definition of "claim" in bar and merger
contexts [ Footnote 15 ] and
expansion of the preclusive effects afforded criminal judgments in
civil litigation [ Footnote
16 ] -- which enhance the capabilities of the courts to deal
with some issues swiftly but fairly.

															Obviously, these mutations in estoppel doctrine are not before
us for wholesale approval or rejection. But, at the very least,
they counsel us to reexamine whether mutuality of estoppel is a
viable rule where a patentee seeks to relitigate the validity of a
patent once a federal court has declared it to be invalid.
[ Footnote 17 ] Page 402 U. S. 328 III The cases and authorities discussed above connect erosion of the
mutuality requirement to the goal of limiting relitigation of
issues where that can be achieved without compromising fairness in
particular cases. The courts have often discarded the rule while
commenting on crowded dockets and long delays preceding trial.
Authorities differ on whether the public interest in efficient
judicial administration is a sufficient ground, in and of itself,
for abandoning mutuality, [ Footnote 18 ] but it is clear that more than crowded
dockets is involved. The broader question is whether it is any
longer tenable to afford a litigant more than one full and fair
opportunity for judicial resolution of the same issue. The question
in these terms includes as part of the calculus the effect on
judicial administration, but it also encompasses the concern
exemplified by Bentham's reference to the gaming table in his
attack on the principle of mutuality of estoppel. Page 402 U. S. 329 In any lawsuit where a defendant, because of the mutuality
principle, is forced to present a complete defense on the merits to
a claim which the plaintiff has fully litigated and lost in a prior
action, there is an arguable misallocation of resources. To the
extent the defendant in the second suit may not win by asserting,
without contradiction, that the plaintiff had fully and fairly, but
unsuccessfully, litigated the same claim in the prior suit, the
defendant's time and money are diverted from alternative uses --
productive or otherwise -- to relitigation of a decided issue. And,
still assuming that the issue was resolved correctly in the first
suit, there is reason to be concerned about the plaintiff's
allocation of resources. Permitting repeated litigation of the same
issue as long as the supply of unrelated defendants holds out
reflects either the aura of the gaming table or "a lack of
discipline and of disinterestedness on the part of the lower
courts, hardly a worthy or wise basis for fashioning rules of
procedure." Kerotest Mfg. Co. v. C-O-Two Co., 342 U.
S. 180 , 342 U. S. 185 (1952). Although neither judges, the parties, nor the adversary
system performs perfectly in all cases, the requirement of
determining whether the party against whom an estoppel is asserted
had a full and fair opportunity to litigate is a most significant
safeguard.

															Some litigants -- those who never appeared in a prior action --
may not be collaterally estopped without litigating the issue. They
have never had a chance to present their evidence and arguments on
the claim. Due process prohibits estopping them despite one or more
existing adjudications of the identical issue which stand squarely
against their position. See Hansberry v. Lee, 311 U. S.
32 , 311 U. S. 40 (1940); Bernhard, 19 Cal. 2d at 811, 122 P.2d at 894.
Also, the authorities have been more willing to permit a defendant
in a second suit to invoke an estoppel against a plaintiff who lost
on the same claim in an earlier suit than they have been to allow a
plaintiff Page 402 U. S. 330 in the second suit to use offensively a judgment obtained by a
different plaintiff in a prior suit against the same defendant.
[ Footnote 19 ] But the case
before us involves neither due process nor "offensive use"
questions. Rather, it depends on the considerations weighing for
and against permitting a patent holder to sue on his patent after
it has once been held invalid following opportunity for full and
fair trial.

															There are several components of the problem. First, we analyze
the proposed abrogation or modification of the Triplett rule in terms of those considerations relevant to the patent
system. Second, we deal broadly with the economic costs of
continued adherence to Triplett. Finally, we explore the
nature of the burden, if any, that permitting patentees to
relitigate patents once held invalid imposes on the federal
courts. A Starting with the premise that the statutes creating the patent
system, expressly sanctioned by the Constitution, [ Footnote 20 ] represent an affirmative
policy choice by Congress to reward inventors, respondents
extrapolate a special public interest in sustaining "good" patents
and characterize patent litigation as so technical and difficult as
to present unusual potential for unsound adjudications. Although Triplett made no such argument in support of its holding,
that rule, offering the unrestricted right to Page 402 U. S. 331 relitigate patent validity, is thus deemed an essential
safeguard against improvident judgments of invalidity. [ Footnote 21 ]

															We fully accept congressional judgment to reward inventors
through the patent system. We are also aware that some courts have
frankly stated that patent litigation can present issues so complex
that legal minds, without appropriate grounding in science and
technology, may have difficulty in reaching decision. [ Footnote 22 ] On the other hand, this
Court has observed that issues of nonobviousness under 35 U.S.C. §
103 present difficulties

															"comparable to those encountered daily by the courts in such
frames of reference as negligence and scienter, and should
be amenable to a case-by-case development." Graham v. John Deere Co., 383 U.S. at 383 U. S. 18 . But
assuming a patent case so difficult as to provoke a frank admission
of judicial uncertainty, one might ask what reason there is to
expect that a second district judge or court of Page 402 U. S. 332 appeals would be able to decide the issue more accurately.
Moreover, as Graham also indicates, Congress has, from the
outset, chosen to impose broad criteria of patentability while
lodging in the federal courts final authority to decide that
question. 383 U.S. at 383 U. S. 10 . In
any event, it cannot be sensibly contended that all issues
concerning patent validity are so complex and unyielding.
Nonobviousness itself is not always difficult to perceive and
decide, and other questions on which patentability depends are,
more often than not, no more difficult than those encountered in
the usual nonpatent case. [ Footnote 23 ]

															Even conceding the extreme intricacy of some patent cases, we
should keep firmly in mind that we are considering the situation
where the patentee was plaintiff in the prior suit and chose to
litigate at that time and place. Presumably, he was prepared to
litigate, and to litigate to the finish, against the defendant
there involved. Patent litigation characteristically proceeds with
some deliberation and, with the avenues for discovery available
under the present rules of procedure, there is no reason to suppose
that plaintiff patentees would face either surprise or unusual
difficulties in getting all relevant and probative evidence before
the court in the first litigation.

															Moreover, we do not suggest, without legislative guidance, that
a plea of estoppel by an infringement or Page 402 U. S. 333 royalty suit defendant must automatically be accepted once the
defendant, in support of his plea, identifies the issue in suit as
the identical question finally decided against the patentee or one
of his privies in previous litigation. [ Footnote 24 ] Rather, the patentee-plaintiff must be
permitted to demonstrate, if he can, that he did not have "a fair
opportunity procedurally, substantively and evidentially to pursue
his claim the first time." Eisel v. Columbia Packing
Co., 181 F.
Supp. 298 , 301 (Mass.1960). This element in the estoppel decision will comprehend,
we believe, the important concerns about the complexity of patent
litigation and the posited hazard that the prior proceedings were
seriously defective.

															Determining whether a patentee has had a full and fair chance to
litigate the validity of his patent in an earlier case is, of
necessity, not a simple matter. In addition to the considerations
of choice of forum and incentive to litigate mentioned above,
[ Footnote 25 ] certain other
factors immediately emerge. For example, if the issue is
nonobviousness, appropriate inquiries would be whether the first
validity determination purported to employ the standards announced
in Graham v. John Deere Co., supra; whether the opinions
filed by the District Court and the reviewing court, if any,
indicate that the prior case was one of those relatively rare
instances where the courts wholly failed to grasp the technical
subject matter and issues in suit; and whether, without fault of
his own, the patentee was deprived of crucial evidence or witnesses
in the first litigation. [ Footnote 26 ] But as so often is the case, no one Page 402 U. S. 334 set of facts, no one collection of words or phrases, will
provide an automatic formula for proper rulings on estoppel pleas.
In the end, decision will necessarily rest on the trial courts'
sense of justice and equity.

															We are not persuaded, therefore, that the Triplett rule, as it was formulated, is essential to effectuate the purposes
of the patent system or is an indispensable or even an effective
safeguard against faulty trials and judgments. Whatever legitimate
concern there my be about the intricacies of some patent suits, it
is insufficient, in and of itself, to justify patentees
relitigating validity issues as long as new defendants are
available. This is especially true if the court in the second
litigation must decide in a principled way whether or not it is
just and equitable to allow the plea of estoppel in the case before
it. B An examination of the economic consequences of continued
adherence to Triplett has two branches. Both, however,
begin with the acknowledged fact that patent litigation is a very
costly process. Judge Frank observed in 1942 that "the expense of
defending a patent suit is often staggering to the small
businessman." Picard v. United Aircraft Corp., 128 F.2d
632, 641 (CA2 1942) (concurring opinion). In Lear, Inc. v.
Adkins, 395 U. S. 653 , 395 U. S. 669 (1969), we noted that one of the benefits accruing to a businessman
accepting a license from a patentee who was threatening him with a
suit was avoiding "the necessity of defending an expensive
infringement action during the period when he may be least able to
afford one." Similarly, in replying to claims by alleged Page 402 U. S. 335 infringers that they have been guilty of laches in suing on
their patents, patentees have claimed that the expense of
litigating forced them to postpone bringing legal action. See,
e.g., Baker Mfg. Co. v. Whitewater Mfg. Co., 430 F.2d 1008,
1011015 (CA7 1970). In recent congressional hearings on revision of
the patent laws, a lawyer-businessman discussing a proposal of the
American Society of Inventors for government-sponsored insurance to
provide funds for litigation to individual inventors holding
nonassigned patents stated: "We are advised that the average cost
for litigating a patent is about $50,000." [ Footnote 27 ]

															This statement, and arguments such as the one made in Baker
Mfg., supra, must be assessed in light of the fact that they
are advanced by patentees contemplating action as plaintiffs, and
patentees are heavily favored as a class of litigants by the patent
statute. Section 282 of the Patent Code provides, in pertinent
part:

															"A patent shall be presumed valid. The burden of establishing
invalidity of a patent shall rest on a party asserting it."

															If a patentee's expense is high though he enjoys the benefits of
the presumption of validity, the defendant in an infringement suit
will have even higher costs as he both introduces proof to overcome
the presumption and attempts to rebut whatever proof the patentee
offers to bolster the claims. In testimony before the Senate
subcommittee considering patent law revision in 1967, a member of
the President's Commission on the Patent Page 402 U. S. 336 System discussed the financial burden looming before one charged
as a defendant in a complex infringement action in terms of amounts
that sometimes run to "hundreds of thousands of dollars." [ Footnote 28 ]

															Statistics tend to bear this out. Patent suits constitute
between 1% and 2% of the total number of civil cases filed each
year in the District Courts. [ Footnote 29 ] Despite this relatively small figure, and
notwithstanding the overwhelming tendency to try these suits
without juries, [ Footnote
30 ] Page 402 U. S. 337 patent cases that go to trial seem to take an inordinate amount
of trial time. [ Footnote 31 ]
While, in 1961, a Senate staff report stated that the "typical
patent trial, without a jury, was completed in 3 days or less,"
[ Footnote 32 ] recent figures
indicate that this description of the time required is today Page 402 U. S. 338 inaccurate. [ Footnote 33 ]
And time -- particularly trial time -- is unquestionably
expensive.

															As stated at the outset of this section, the expense of patent
litigation has two principal consequences if the Triplett rule is maintained. First, assuming that a perfectly sound judgment
of invalidity has been rendered in an earlier suit involving the
patentee, a second infringement action raising the same issue and
involving much of the same proof has a high cost to the individual
parties. The patentee is expending funds on litigation to protect a
patent which is, by hypothesis, invalid. These moneys could be put
to better use, such as further research and development. The
alleged infringer -- operating as he must against the presumption
of validity -- is forced to divert substantial funds to litigation
that is wasteful.

															The second major economic consideration is far more significant.
Under Triplett, only the comity restraints flowing from an
adverse prior judgment operate to limit the patentee's right to sue
different defendants on the same patent. In each successive suit,
the patentee enjoys the statutory presumption of validity, and so
may easily put the alleged infringer to his expensive proof. As a
consequence, prospective defendants will often decide that paying
royalties under a license or other settlement is preferable to the
costly burden of challenging the patent. Page 402 U. S. 339 The problem has surfaced and drawn comment before. See,
e.g., Nickerson v. Kutschera, 419 F.2d 983, 988 n. 4 (CA3
1969) (dissenting opinion); Picard v.'United Aircraft
Corp., 128 F.2d at 641-642 (concurring opinion). In 1961, the
Senate Judiciary Subcommittee on Patents, Trademarks, and
Copyrights published a staff study of infringement and declaratory
judgment actions terminated in the district courts and courts of
appeals during 1949-1958; the report showed 62 actions commenced
after an earlier determination that the patent in suit was not
valid. It also noted that the "vast majority" of such suits were
terminated without a second adjudication of validity. 1961 Staff
Report 19. It is apparent that termination without a second
adjudication of validity was the result of a licensing agreement or
some other settlement between the parties to the second suit. It is
also important to recognize that this study covered only cases
filed and terminated; there were undoubtedly more suits that were
threatened but not filed, because the threat alone was sufficient
to forestall a challenge to the patent.

															This is borne out by the observations of the President's
Commission on the Patent System and recent testimony on proposals
for changes in the patent laws. Motivated by the economic
consequences of repetitious patent litigation, the Commission
proposed:

															"A final federal judicial determination declaring a patent claim
invalid shall be in rem, and the cancellation of such
claim shall be indicated on all patent copies subsequently
distributed by the Patent Office."

															Recommendation XXIII, Commission Report 38. The Commission
stressed the competitive disadvantage imposed on an alleged
infringer who is unable or unwilling to defend a suit on the
patent, stating also that a

															"patentee, having been afforded the opportunity to Page 402 U. S. 340 exhaust his remedy of appeal from a holding of invalidity, has
had his 'day in court,' and should not be allowed to harass others
on the basis of an invalid claim. There are few, if any, logical
grounds for permitting him to clutter crowded court dockets and to
subject others to costly litigation." Id. at 39. The report provoked the introduction of
several bills to effect broad changes in the patent system. Some
bills contained provisions imposing an inflexible rule of in
rem invalidity operating against a patentee regardless of the
character of the litigation in which his patent was first declared
invalid. See S. 1042, 90th Cong., 1st Sess., § 294 (1967),
and H.R. 5924, 90th Cong., 1st Sess., § 294 (1967); [ Footnote 34 ] cf. Page 402 U. S. 341 S. 3892, 90th Cong., 2d Sess., § 294 (1968). [ Footnote 35 ] Hearings were held in both
Houses on these and other patent revision bills. [ Footnote 36 ] Page 402 U. S. 342 In the Senate hearings, a member of the President's Commission
remarked:

															"The businessman can be subjected to considerable harassment as
an alleged infringer. Even in cases where he feels strongly that
the patent would ultimately be held invalid, when he considers the
hundreds of thousands of dollars in complex cases that could be
involved in defending a suit, he may conclude that the best course
of action is to settle for less to get rid of the problem. These
nuisance settlements, although distasteful, are often, under the
present system, justified on pure economics."

															" * * * *" "In many instances, the very survival of the small businessman
may be at stake. His cost of fully litigating a claim against him
can seriously impair his ability to stay in business."

															1967 Senate Hearings 103. [ Footnote 37 ]

															The tendency of Triplett to multiply the opportunities
for holders of invalid patents to exact licensing agreements or
other settlements from alleged infringers must Page 402 U. S. 343 be considered in the context of other decisions of this Court.
Although recognizing the patent system's desirable stimulus to
invention, we have also viewed the patent as a monopoly which,
although sanctioned by law, has the economic consequences attending
other monopolies. [ Footnote
38 ] A patent yielding returns for a device that fails to meet
the congressionally imposed criteria of patentability is anomalous.
[ Footnote 39 ] This Court has
observed:

															"A patent by its very nature is affected with a public interest.
. . . [It] is an exception to the general rule against monopolies
and to the right to access to a free and open market. The
far-reaching social and economic consequences of a patent,
therefore, give the public a paramount interest in seeing that
patent monopolies spring from backgrounds free from fraud or other
inequitable conduct and that such monopolies are kept within their
legitimate scope." Precision Instrument Mfg. Co. v. Automotive Maintenance
Machinery Co., 324 U. S. 806 , 324 U. S. 816 (1945).

															One obvious manifestation of this principle has been the series
of decisions in which the Court has condemned attempts to broaden
the physical or temporal scope of the patent monopoly. As stated in Mercoid v. Mid-Continent Investment Co., 320 U.
S. 661 , 320 U. S. 666 (1944):

															"The necessities or convenience of the patentee do not justify
any use of the monopoly of the patent Page 402 U. S. 344 to create another monopoly. The fact that the patentee has the
power to refuse a license does not enable him to enlarge the
monopoly of the patent by the expedient of attaching conditions to
its use. United States v. Masonite
Corp. , [ 316 U.S.
265 ,] 316 U. S. 277 [(1942)]. The
method by which the monopoly is sought to be extended is
immaterial. United States v. Univis Lens
Co. , [ 316 U.S.
241 ,] 316 U. S. 251 -252 [(1942)].
The patent is a privilege. But it is a privilege which is
conditioned by a public purpose. It results from invention and is
limited to the invention which it defines. [ Footnote 40 ]"

															A second group of authorities encourage authoritative testing of
patent validity. In 1952, the Court indicated that a manufacturer
of a device need not await the filing of an infringement action in
order to test the validity of a competitor's patent, but may
institute his own suit under the Declaratory Judgment Act. Kerotest Mfg. Co. v. C-O-Two Co., 342 U.S. at 342 U. S.
185 -186. [ Footnote
41 ] Other Page 402 U. S. 345 decisions of this type involved removal of restrictions on those
who would challenge the validity of patents. [ Footnote 42 ]

															Two Terms ago in Lear, Inc. v. Adkins, 395 U.
S. 653 (1969), we relied on both lines of authority to
abrogate the doctrine that, in a contract action for unpaid patent
royalties, the licensee of a patent is estopped from proving "that
his licensor was demanding royalties for the use of an idea which
was in reality a part of the public domain." 395 U.S. at 395 U. S. 656 .
The principle that "federal law requires that all ideas in general
circulation be dedicated to the common good unless they are
protected by a valid patent," 395 U.S. at 395 U. S. 668 ,
found support in Sears and Compco and the first
line of cases discussed above. [ Footnote 43 ] The holding that licensee estoppel was no
longer tenable was rooted in the second line of cases eliminating
obstacles to suit by those disposed to challenge the validity of a
patent. 395 U.S. at 395 U. S.
663 -668. Moreover, as indicated earlier, we relied on
practical considerations that patent licensees "may often be the
only individuals with enough economic incentive to challenge the
patentability of an inventor's discovery." 395 U.S. at 395 U. S.
670 .

															To be sure, Lear obviates to some extent the concern
that Triplett prompts alleged infringers to pay royalties
on patents previously declared invalid, rather than to engage in
costly litigation when infringement suits are Page 402 U. S. 346 threatened. Lear permits an accused infringer to accept
a license, pay royalties for a time, and cease paying when
financially able to litigate validity, secure in the knowledge that
invalidity may be urged when the patentee-licensor sues for unpaid
royalties. Nevertheless, if the claims are, in fact, invalid, and
are identical to those invalidated in a previous suit against
another party, any royalties actually paid are an unjust increment
to the alleged infringer's costs. Those payments put him at a
competitive disadvantage vis-a-vis other alleged
infringers who can afford to litigate or have successfully
litigated the patent's validity.

															This has several economic consequences. First, the alleged
infringer who cannot afford to defend may absorb the royalty costs
in order to compete with other manufacturers who have secured
holdings that the patent is invalid, cutting the profitability of
his business and perhaps assuring that he will never be in a
financial position to challenge the patent in court. On the other
hand, the manufacturer who has secured a judicial holding that the
patent is invalid may be able to increase his market share
substantially, and he may do so without coming close to the price
levels that would prevail in a competitive market. Because he is
free of royalty payments, the manufacturer with a judgment against
the patent may price his products higher than competitive levels
absent the invalid patent, yet just below the levels set by those
manufacturers who must pay royalties. Third, consumers will pay
higher prices for goods covered by the invalid patent than would be
true had the initial ruling of invalidity had at least the
potential for broader effect. And even if the alleged infringer can
escape royalty obligations under Lear when he is able to bear the
cost of litigation, any royalty payments passed on to consumers
are, as a practical matter, unrecoverable by those who in fact,
paid them. Beyond all of this, the Page 402 U. S. 347 rule of Triplett may permit invalid patents to serve
almost as effectively as would valid patents as barriers to the
entry of new firms -- particularly small firms.

															Economic consequences like these, to the extent that they can be
avoided, weigh in favor of modification of the Triplett mutuality principle. Arguably, however, the availability of
estoppel to one charged with infringement of a patent previously
held invalid will merely shift the focus of litigation from the
merits of the dispute to the question whether the party to be
estopped had a full and fair opportunity to litigate his claim in
the first action. Moore & Currier, supra, n 7, at 309-310. It would seem
sufficient answer to note that, once it is determined that the
issue in both actions was identical, it will be easier to decide
whether there was a full opportunity to determine that issue in the
first action than it would be to relitigate completely the question
of validity. And, this does not in fact, seem to have been a
problem in other contexts, where strict mutuality of estoppel has
been abandoned.

															It has also been suggested that 35 U.S.C. § 285, which allows a
court to award reasonable attorney's fees to a prevailing party "in
exceptional cases," [ Footnote
44 ] and 35 U.S.C. § 288, under which a patentee forfeits his
right to recover costs even as to the valid claims of his patent if
he does not disclaim invalid claims before bringing suit, work to
inhibit repetitious suits on invalid patents. But neither of these
provisions can operate until after litigation has occurred, and the
outlay required to try a lawsuit presenting validity issues is the
factor which undoubtedly forces many alleged infringers into
accepting Page 402 U. S. 348 licenses, rather than litigating. If concern about such license
agreements is proper, as our cases indicate that it is, the accused
infringer should have available an estoppel defense that can be
pleaded affirmatively and determined on a pretrial motion for
judgment on the pleadings or summary judgment. Fed.Rules Civ.Proc.
8(c), 12(c), and 56. C As the preceding discussion indicates; although patent trials
are only a small portion of the total amount of litigation in the
federal courts, they tend to be of disproportionate length.
[ Footnote 45 ] Despite this,
respondents urge that the burden on the federal courts from
relitigation of patents once held invalid is de minimis. They rely on the figures presented in the 1961 Staff Report: during
the period 1948-1959, 62 federal suits were terminated which
involved relitigation of a patent previously held invalid, a figure
constituting about 1% of the patent suits commenced during the same
period. The same figures show that these 62 suits involved 27
patents, indicating that some patentees sue more than once after
their patent has been invalidated. Respondents also urge that most
of these 62 suits were settled without litigation. 1961 Staff
Report 19. But, as we have suggested, this fact cuts both ways.

															Even accepting respondents' characterization of these figures as de minimis, it is clear that abrogation of Triplett will save some judicial time if even a
few relatively lengthy patent suits may be fairly disposed of on
pleas of estoppel. More fundamentally, while the cases do discuss
reduction in dockets as an effect of elimination of the mutuality
requirement, they do not purport to hold that predictions about the
actual amount of judicial time that will be saved under such a
holding control decision Page 402 U. S. 349 of that question. Of course, we have no comparable figures for
the past decade concerning suits begun after one declaration of
invalidity, although number of recent, significant examples of
repeated litigation of the same patent have come to our attention.
[ Footnote 46 ] Regardless of
the magnitude of the figures, the economic consequences of
continued adherence to Triplett are serious and any
reduction of litigation in this context is by comparison an
incidental matter in considering.whether to abrogate the mutuality
requirement. D It is clear that judicial decisions have tended to depart from
the rigid requirements of mutuality. In accordance with this trend,
there has been a corresponding development of the lower courts'
ability and facility in dealing with questions of when it is
appropriate and fair to impose an estoppel against a party who has
already litigated an issue once and lost. As one commentator has
stated:

															"Under the tests of time and subsequent developments, the Bernhard decision has proved its merit and the mettle of
its author. The abrasive action of new factual configurations and
of actual human controversies, disposed of in the common law
tradition by competent courts, far more than the commentaries of
academicians, leaves the decision revealed for what it is, as it
was written: a shining landmark of progress in justice and law
administration."

															Currie, 53 Calif.L.Rev. at 37.

															When these judicial developments are considered in the light of
our consistent view -- last presented in Lear, Inc. v.
Adkins -- that the holder of a patent should not be insulated
from the assertion of defenses and thus allowed Page 402 U. S. 350 to exact royalties for the use of an idea that is not in fact,
patentable or that is beyond the scope of the patent monopoly
granted, it is apparent that the uncritical acceptance of the
principle of mutuality of estoppel expressed in Triplett v.
Lowell is today out of place. Thus, we conclude that Triplett should be overruled to the extent it forecloses a
plea of estoppel by one facing a charge of infringement of a patent
that has once been declared invalid. IV Res judicata and collateral estoppel are affirmative
defenses that must be pleaded. Fed.Rule Civ.Proc. 8(c). The purpose
of such pleading is to give the opposing party notice of the plea
of estoppel and a chance to argue, if he can, why the imposition of
an estoppel would be inappropriate. Because of Triplett v.
Lowell, petitioner did not plead estoppel and respondents
never had an opportunity to challenge the appropriateness of such a
plea on the grounds set forth in 402 U. S. Therefore, given the partial overruling of Triplett, we
remand the case. Petitioner should be allowed to amend its
pleadings in the District Court to assert a plea of estoppel.
Respondents must then be permitted to amend their pleadings, and to
supplement the record with any evidence showing why an estoppel
should not be imposed in this case. If necessary, petitioner may
also supplement the record. In taking this action, we intimate no
views on the other issues presented in this case. The judgment of
the Court of Appeals is vacated and the cause is remanded to the
District Court for further proceedings consistent with this
opinion.

															[ Footnote 1 ]

															The Foundation has filed six infringement actions based on the
Isbell patent. Foundation's Brief 22.

															[ Footnote 2 ]

															The Foundation claimed that all of the Isbell patent's 15 claims
except numbers 6, 7, and 8 were infringed by one or more of
Winegard's 22 antenna models designed for receiving television
signals.

															[ Footnote 3 ]

															The District Judge held:

															"Those skilled in the art [of antenna design] at the time of the
Isbell application knew (1) the log periodic method of designing
frequency independent antennas, (2) that antenna arrays consisting
of straight dipoles with progressively varied lengths and spacings
exhibit greater broad band characteristics than those consisting of
dipoles of equal length and spacing and, (3) that a dipole array
type antenna having elements spaced less than 1/2 wavelength apart
could be made unidirectional in radiation pattern by transposing
the feeder line between elements and feeding the array at the end
of the smallest element."

															"It is the opinion of the Court that it would have been obvious
to one ordinarily skilled in the art and wishing to design a
frequency independent unidirectional antenna to combine these three
old elements, all suggested by the prior art references previously
discussed."

															271 F. Supp. at 418-419.

															[ Footnote 4 ] See Petition for Certiorari 13. The grant of certiorari
was not limited to the validity vel non of the Isbell
patent.

															[ Footnote 5 ] See also Nickerson v. Kutschera, 419 F.2d 983, 984 (CA3
1969); id. at 984-988 (Hastie, C.J., dissenting); Nickerson v. Kutschera, 390 F.2d 812 (CA3 1968); Tidewater Patent Development Co. v. Kitchen, 371 F.2d
1004, 1006 (CA4 1966); Aghnides v. Holden, 226 F.2d 949,
951 (CA7 1955) (Schnackenberg, J., concurring); Technograph
Printed Circuits, Ltd. v. Packard Bell Electronics
Corp., 290 F.
Supp. 308 , 317-319 (CD Cal.1968) (holding that Triplett did not bar an infringement suit defendant's
motion for summary judgment on res judicata grounds
because (1) the statements as to mutuality of estoppel were dicta,
and (2) the Triplett rule conflicted not only with more
recent precedent in the estoppel area, but also with the spirit of
certain provisions of the Federal Rules of Civil Procedure, adopted
six years after Triplett was decided); Nickerson v.
Pep Boys -- Manny, Moe & Jack, 247 F.
Supp. 221 (Del.1965). In the latter case, Judge Steel imposed
an estoppel on facts somewhat similar to those before us. He
analyzed the cases relied on in Triplett, id. at 221-222,
and concluded: "[f]rom the standpoint of the precedents [it cites],
. . . Triplett v. Lowell does not rest upon too solid a
foundation." Id. at 222. Cf. Technograph Printed
Circuits, Ltd. v. United States, 178 Ct.Cl. 543, 372 F.2d 969
(1967); Agrashell, Inc. v. Bernard Sirotta
Co., 281 F.
Supp. 704 , 707-708 (EDNY 1968).

															[ Footnote 6 ]

															In rebuttal, counsel for petitioner made it clear that he was
urging a "modification" of Triplett. "Q. Well, has Petitioner finally decided to forego any request
for reconsidering Triplett, entirely, or in any part? I
understood you previously to say you would welcome a modification
of it to some extent."

															"A. Well, 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, when somebody is abusing it, . . . there are
exceptions, and I think the Solicitor [General] is very close to
[using] the idea that, if in fact, this were the same trial and
they had the opportunity to present their witnesses before, and
they didn't do it, that it seriously ought to be considered whether
there ought to be an estoppel in a situation such as this."

															Tr. of Oral Arg. 64-65.

															Rule 23(1)(c) of the Rules of this Court states that "[o]nly the
questions set forth in the petition or fairly comprised therein
will be considered by the court." While this rule reflects many
decisions stating that the Court is not required to decide
questions not raised in a petition for certiorari, it does not
limit our power to decide important questions not raised by the
parties. The rule has certain well recognized exceptions,
particularly in cases arising in the federal courts. See R. Robertson & F. Kirkham, Jurisdiction of the Supreme Court of
the United States § 418 (R. Wolfson & P. Kurland ed.1951); R.
Stern & E. Gressman, Supreme Court Practice § 6.37 (4th
ed.1969).

															The instant case is not one where the parties have not briefed
or argued a question that the Court nevertheless finds controlling
under its authority to notice plain error. See Rule
40(1)(d)(2), Rules of the Supreme Court of the United States; Silber v. United States, 370 U. S. 717 (1962). Rather, given what transpired at oral argument, the case is
like Moragne v. States Marine Lines, Inc., 398 U.
S. 375 (1970). There, after granting certiorari, we
asked the parties to brief and argue the continued validity of The Harrisburg, 119 U. S. 199 (1886). The petitioner, who would have stood to gain if The
Harrisburg perished, argued that that decision should be
overruled, but strongly maintained that it was unnecessary to do so
in order to afford her relief. Respondent, of course, argued that The Harrisburg should be left intact. The United States,
appearing as amicus curiae, urged the Court to overrule The Harrisburg, and that was the result.

															Moreover, in a landmark decision involving an important question
of judicial administration in the federal courts, this Court
overruled a prior decision of many years' standing although the
parties did not urge such a holding in their briefs. Erie R.
Co. v. Tompkins, 304 U. S. 64 , 66,
68-69 [argument of counsel omitted from electronic version] (1938). See also R. Jackson, The Struggle for Judicial Supremacy
281-282 (1949). While the question here is hardly of comparable
importance, it is a significant one, in the same general field, and
it has been fully briefed and argued by the parties and amici. See Moragne, 398 U.S. at 398 U. S.
378 -380, n. 1; cf. NLRB v. Pittsburgh S.S. Co., 337 U. S. 656 , 337 U. S.
661 -662 (1949).

															[ Footnote 7 ] See also 225 U.S. at 225 U. S.
130 -131; Stone v. Farmers' Bank, 174 U.
S. 409 (1899); Keokuk & W. R. Co. v.
Missouri, 152 U. S. 301 , 152 U. S. 317 (1894); Litchfield v. Goodnow, 123 U.
S. 549 , 123 U. S. 552 (1887). Bigelow also spent some time discussing one of the
many exceptions to the mutuality requirement, 225 U.S. at 225 U. S.
127 -128. These "exceptions" are described in Moore &
Currier, Mutuality and Conclusiveness of Judgments, 35 Tul.L.Rev.
301, 311-329 (1961), and Note, 35 Geo.Wash.L.Rev. 1010, 1015-1017
(1967).

															[ Footnote 8 ]

															Under the topic head "Persons not Parties or Privies," § 93
provides:

															"General Rule. Except as stated in §§ 94-111, a person who is
not a party or privy to a party to an action in which a valid
judgment other than a judgment in rem is rendered (a)
cannot directly or collaterally attack the judgment, and (b) is not
bound by or entitled to claim the benefits of an adjudication upon
any matter decided in the action."

															Illustration 10 of the Restatement stated the essentials of the Triplett rule:

															"A brings an action against B for infringement of a patent. B
defends on the ground that the alleged patent was void and obtains
judgment. A brings an action for infringement of the same patent
against C who seeks to interpose the judgment in favor of B as res judicata, but setting up no relation with B. On
demurrer, judgment should be for A."

															[ Footnote 9 ] Atkinson v. White, 60 Me. 396, 398 (1872); Jenkins
v. Atlantic Coast Line R. Co., 89 S.C. 408, 71 S.E. 1010
(1911); United States v. Wexler, 8 F.2d 880 (EDNY 1925); Brobston v. Darby Borough, 290 Pa. 331, 138
A. 849 (1927); Eagle, Star & British Dominions Ins. Co. v.
Heller, 149 Va. 82, 140 S.E. 314 (1927); Liberty Mutual
Ins. Co. v. George Colon & Co., 260 N.Y. 305, 183 N.E. 506
(1932); Coca Cola Co. v. Pepsi-Cola Co., 36 Del. 124, 172
A. 260 (Super.Ct.1934); see also Good Health Dairy Products
Corp. v. Emery, 275 N.Y. 14, 19, 9 N.E.2d 758, 760 (1937). In
the latter case, the New York Court of Appeals stated:

															"It is true that [the owner of the automobile], not being a
party to the earlier actions, and not having had a chance to
litigate her rights and liabilities, is not bound by the judgments
entered therein, but, on the other hand, that is not a valid ground
for allowing the plaintiffs to litigate anew the precise questions
which were decided against them in a case in which they were
parties."

															[ Footnote 10 ]

															The principle was attacked in Cox, Res Adjudicata: Who
Entitled to Plead, 9 Va.L.Rev. (n.s.) 241, 245-247 (1923); Comment,
35 Yale L.J. 607, 610 (1926); Comment, 29 Ill.L.Rev. 93, 94 (1934);
Note, 18 N.Y. U. L.Q.Rev. 565, 570-573 (1941); Recent Decisions, 27
Va.L.Rev. 955 (1941); Recent Cases, 15 U.Cin.L.Rev. 349 (1941). Cf. von Moschzisker, Res Judicata, 38 Yale L.J.
299, 303 (1929); Comment, 23 Ore.L.Rev. 273 (1944); Recent Cases,
54 Harv.L.Rev. 889 (1941).

															[ Footnote 11 ]

															For discussion of the "offensive-defensive" distinction, see
generally Vestal, Preclusion/ Res Judicata Variables:
Parties, 50 Iowa L.Rev. 27, 43-76 (1964); Note, 35 Geo.Wash.L.Rev.
1010 (1967). See also Currie, Mutuality of Collateral
Estoppel: Limits of the Bernhard Doctrine, 9 Stan.L.Rev.
281 (1957); Note, 68 Col.L.Rev. 1590 (1968); Note, 52 Cornell L.Q.
724 (1967).

															[ Footnote 12 ]

															In federal question cases, the law applied is federal law. This
Court has noted, "It has been held in non-diversity cases, since Erie R. Co. v. Tompkins, that the federal courts will
apply their own rule of res judicata. " Heiser v.
Woodruff, 327 U. S. 726 , 327 U. S. 733 (1946). See also Vestal, Res Judicata /Preclusion
by Judgment: The Law Applied in Federal Courts, 66 Mich.L.Rev.
1723, 1739, 1745 (1968); id. cases cited at 1739-1740, nn.
62-64.

															[ Footnote 13 ] See, e.g., Lober v. Moore, 135 U.S.App.D.C. 146, 417
F.2d 714 (1969); Provident Tradesmens Bank & Trust Co. v.
Lumbermens Mutual Cas. Co., 411 F.2d 88, 92-95 (CA3 1969); Seuros Tepeyac, S.A. Compania Mexicana v. Jernigan, 410
F.2d 718, 726-728 (CA5 1969), cert. denied, 396 U.S. 905
(1969); Cauefield v. Fidelity & Cas. Co. of New York, 378 F.2d 876, 878-879 (CA5), cert. denied, 389 U.S. 1009
(1967); Graves v. Associated Transport, Inc., 344 F.2d 894
(CA4 1965); Kurlan v. Commissioner, 343 F.2d 625, 628-629
(CA2 1965); United States v. United Air Lines, 216 F.
Supp. 709, 725-730 (ED Wash., Nev.1962), aff'd, as to res
judicata, sub nom. United Air Lines v. Wiener, 335 F.2d 379,
404-405 (CA9 1964); Zdanok v. Glidden Co., supra, at
954-956; Davis v. McKinnon & Mooney, 266 F.2d 870,
872-873 (CA6 1959); People v. Ohio Cas. Ins. Co., 232 F.2d
474, 477 (CA10 1956); Adriaanse v. United States, 184 F.2d
968 (CA2 1950) , cert. denied, 340 U.S. 932 (1951); Maryland v. Capital Airlines, Inc., 267 F.
Supp. 298 , 302-305 (Md.1967); Mathews v. New York Racing
Assn., Inc., 193 F.
Supp. 293 (SDNY 1961); Eisel v. Columbia Packing
Co., 181 F.
Supp. 298 (Mass.1960).

															[ Footnote 14 ] See cases cited n 9, supra. A more recent canvass of cases is presented in
Note, 35 Geo.Wash.L.Rev. 1010 (1967).

															The Supreme Court of Oregon was the most recent state court to
adopt Bernhard. Babler v. Fletcher, 257 Ore. 1, 474 P.2d
329 (1970); see also Pennington v. Snow, 471 P.2d 370 ,
376-377 (Alaska 1970); Ellis v. Crockett, 51 Haw. 45, 56, 451 P.2d 814 ,
822 (1969); Pat Perusse Realty Co. v. Lingo, 249 Md. 33,
238 A.2d 100 (1968); Sanderson v. Balfour, 109 N.H. 213,
247 A.2d 185 (1968); Home Owners Fed. Savings & Loan Assn.
v. Northwestern Fire & Marine Ins. Co., 354 Mass. 448,
451-455, 238
N.E.2d 55 , 57-59 (1968) (approving use of Bernhard by
a defendant against a previously losing plaintiff); DeWitt,
Inc. v. Hall, 19 N.Y.2d 141, 225 N.E.2d 195 (1967); Lustik
v. Rankila, 269 Minn. 515, 131 N.W.2d
741 (1964); Lucas v. Velikanje, 2 Wash. App. 888, 471
P.2d 103 (1970) (lower state appellate court held that State
Supreme Court would follow Bernhard in an appropriate
case); Howell v. Vito's Trucking & Excavating Co., 20
Mich.App. 140, 173 N.W.2d 777 (1969); Desmond v. Kramer, 96 N.J.Super. 96, 232 A.2d 470 (1967); Lynch v. Chicago Transit
Authority, 62 Ill.App.2d 220, 210 N.E.2d 792 (1965).

															[ Footnote 15 ] See F. James, Civil Procedure 552-573 (1965); Vestal, Res Judicata /Preclusion by Judgment: The Law Applied in
Federal Courts, 66 Mich.L.Rev. 1723, 1724 (1968).

															[ Footnote 16 ] See Moore v. United States, 360 F.2d 353 (CA4 1965); Teitelbaum Furs, Inc. v. Dominion Ins. Co.,
Ltd., 58 Cal. 2d
601 , 375 P.2d 439 (1962); Eagle, Star & British
Dominions Ins. Co. v. Heller, 149 Va. 82, 140 S.E. 314 (1927);
Vestal, supra, n 15, at 1724; Vestal & Coughenour, Preclusion/ Res
Judicata Variables: Criminal Prosecutions, 19 Vand.L.Rev. 683
(1966).

															[ Footnote 17 ]

															We agree with the Government that Congress has not approved the Triplett rule, either by its failure to modify that rule
over the years, see Boys Markets, Inc. v. Retail Clerks
Union, 398 U. S. 235 , 398 U. S.
241 -242 (1970); Girouard v. United States, 328 U. S. 61 , 328 U. S. 69 -70
(1946); Helvering v. Hallock, 309 U.
S. 106 , 309 U. S.
119 -120 (1940); by anything that transpired during the
preparation for and accomplishment of the 1952 revision of the
Patent Code; or because in rem invalidity provisions, see n 34, infra have disappeared from recent proposals for reform of
the patent statute.

															[ Footnote 18 ]

															Professors Moore and Currier point out that one of the
underpinnings of the general concept of res judicata is
the prevention of harassment of some litigants by the repeated
assertion of the same or different claims against them by others,
and that this problem is simply not present where the person
asserting an estoppel was not a party (or privy to a party) in the
earlier suit. They then argue that

															"the doctrine of judicial finality is not a catchpenny
contrivance to dispose of cases merely for the sake of disposition
and clear up dockets in that manner."

															Moore & Currier, supra, n 7, at 308. On the other hand, Professor Vestal argues
that

															"[j]udges, overwhelmed by docket loads, are looking for devices
to expedite their work. Preclusion offers an opportunity to
eliminate litigation which is not necessary or desirable."

															Vestal, supra, n 15, at 1724.

															[ Footnote 19 ] But see United States v. United Air Lines, supra; Zdanok v.
Glidden Co., supra; Currie, Civil Procedure: The Tempest
Brews, 53 Calif.L.Rev. 25, 28-37 (1965); Vestal, 50 Iowa L.Rev. at
5559; cf. Semmel, Collateral Estoppel, Mutuality and
Joinder of Parties, 68 Col.L.Rev. 1457 (1968); Weinstein, Revision
of Procedure: Some Problems in Class Actions, 9 Buffalo L.Rev. 433,
448 454 (1960); Note, 35 Geo.Wash.L.Rev. 1010 (1967).

															[ Footnote 20 ]

															U.S.Const., Art. I, § 8, cl. 8.

															[ Footnote 21 ]

															The Court of Claims has stated:

															"For patent litigation, there is a special reason why
relitigation is not automatically banned as needless or redundant,
and why error should not be perpetuated without inquiry. Patent
validity raises issues significant to the public, as well as to the
named parties. Sinclair & Carroll Co. v. Interchemical
Corp., 325 U. S. 327 , 325 U. S.
330 (1945). It is just as important that a good patent
be ultimately upheld as that a bad one be definitively stricken. At
the same time, it must be remembered that the issue of patent
validity is often"

															"as fugitive, impalpable, wayward, and vague a phantom as exists
in the whole paraphernalia of legal concepts. . . . If there be an
issue more troublesome, or more apt for litigation than this, we
are not aware of it."

															" Harries v. Air King Products Co., supra, 183 F.2d at
162 (per L. Hand, C.J.). Because of the intrinsic nature of the
subject, the first decision can be quite wrong, or derived from an
insufficient record or presentation." Technograph Printed Circuits, 178 Ct.Cl. at 556, 372
F.2d at 977-978.

															[ Footnote 22 ] See Nyssonen v. Bendix Corp., 342 F.2d 531, 532 (CA1
1965); Harries v. Air King Products Co., 183 F.2d 158, 164
(CA2 1950); Parke-Davis & Co. v. H. K. Mulford Co., 189 F. 95, 115 (SDNY 1911).

															[ Footnote 23 ]

															The Triplett rule apparently operates to defeat a plea
of estoppel where a patent has been declared invalid under
provisions other than 35 U.S.C. § 103, the section defining
nonobviousness of the subject matter as a prerequisite to
patentability and giving rise to many technical issues which it is
claimed courts are poorly equipped to judge. Under §§ 101 and 102
of the 1952 Act, patentability is also conditioned on novelty and
utility. Some subsections of § 102 -- each of which can result in
the loss of a patent -- involve completely nontechnical issues. Yet
the breadth of Triplett would force defendants in
repetitious suits on a patent invalidated on one of these grounds
to repeat proof that may be simple of understanding, yet expensive
to produce.

															[ Footnote 24 ] See nn. 34-35 infra. [ Footnote 25 ] See Zdanok v. Glidden Co., 327 F.2d at 956; Teitelbaum Furs, Inc., 58 Cal. 2d at 606-607, 375 P.2d at
441; cf. Berner v. British Commonwealth Pacific Airlines,
Ltd., 346 F.2d 532, 540-541 (CA2 1965).

															[ Footnote 26 ]

															It has been argued that one factor to be considered in deciding
whether to allow a plea of estoppel in a second action is the
possibility that the judgment in the first action was a compromise
verdict by a jury. This problem has not, however, been deemed
sufficient to preclude abrogation of the mutuality principle in
other contexts. Nor would it appear to be a significant
consideration in deciding when to sustain a plea of estoppel in
patent litigation, since most patent cases are tried to the court. See n 30, infra. [ Footnote 27 ]

															Hearings on Patent Law Revision before the Subcommittee on
Patents, Trademarks, and Copyrights of the Senate Committee on the
Judiciary, 90th Cong., 2d Sess., 616 (1968) (statement of Henry J.
Cappello, President, Space Recovery Research Center, Inc., and
consultant on patent policy for the National Small Business
Association) (hereafter 1968 Senate Hearings).

															[ Footnote 28 ]

															Hearings on Patent Law Revision before the Subcommittee on
Patents, Trademarks, and Copyrights of the Senate Committee on the
Judiciary, 90th Cong., 1st Sess., 103 (1967) (statement of James W.
Birkenstock, Vice President, I.B.M. Corp.) (hereafter 1967 Senate
Hearings).

															It is significant that the President's Commission identified as
one of its primary objectives "reduc[ing] the expense of obtaining
and litigating a patent." "To Promote the Progress of . . . Useful
Arts" In an Age of Exploding Technology, Report of the President's
Commission on the Patent System 4 (1966) (hereafter Commission
Report). Judge Rich of the Court of Customs and Patent Appeals,
whose public reaction to the Commission Report was mixed, did agree
that "[l]itigation being as expensive as it is, no one embarks upon
it lightly." Rich, The Proposed Patent Legislation: Some Comments,
35 Geo.Wash.L.Rev. 641, 644 (1967).

															[ Footnote 29 ]

															In fiscal 1968, 71,449 civil actions were filed in the federal
district courts, 857 of which were patent suits. In fiscal 1969,
77,193 civil suits were filed; 889 involved patents. In fiscal
1970, 87,321 civil suits were initiated, 1,023 of which involved
patents. Annual Report of the Director of the Administrative Office
of the United States Courts for the Fiscal Year Ended June 30,
1968, Table C-2 (1969); Annual Report of the Director of the
Administrative Office of the United States Courts for the Fiscal
Year Ended June 30, 1969, Table C-2 (1970); Annual Report of the
Director of the Administrative Office of the United States Courts
for the Fiscal Year Ended June 30, 1970, Table C-2 (temp. ed.1971)
(hereafter Annual Report 1968, etc.).

															[ Footnote 30 ]

															Most patent cases are tried to the court. In fiscal 1968, 1969,
and 1970, the total number of patent cases going to trial and the
number of patent cases going to juries were, respectively: 1968 --
131, 2; 1969 -- 132, 8; and 1970 -- 119, 3. Annual Reports
19681970, Table C-8.

															[ Footnote 31 ]

															The table below compares patent cases tried to the court during
fiscal 1968, 1969, and 1970 with all nonjury civil cases tried
during the same years. It reveals several facts: (1) something over
90% of all civil litigation is concluded within three full trial
days, but less than half the patent cases are concluded in such a
period of time; (2) whereas between 1.2% and 1.7% of civil nonjury
trials in general require 10 or more trial days, between 14.7% and
19% of the patent cases tried to the court require 10 or more days
to conclude; and (3), while the three-year trend in the district
courts appears to be toward more expeditious handling of civil
cases tried without a jury in terms of an annual increase in the
percentage of cases concluded in three trial days or less and an
overall decrease in the percentage of cases requiring 10 or more
days, the trends in patent litigation are exactly contrary.

															bwm: Fiscal 1968 Fiscal 1969 Fiscal 1970 Total civil non-jury trials. . . . . 5,478 5,619 6,078

															Total patent non-jury trials . . . . 129 124 116

															Approx. % of non-jury civil

															cases concluded in 3 trial

															days or less . . . . . . . . . . . 92.2 92.8 93.1

															Approx. % of non-jury patent

															cases concluded in 3 trial

															days or less . . . . . . . . . . . 49.6 46.8 44.0

															Approx. % of non-jury civil

															trials taking 10 or more trial days

															to conclude. . . . . . . . . . . . 1.7 1.2 1.3

															Approx. % of non-jury patent

															trials taking 10 or more

															trial days to conclude . . . . . . 14.7 15.3 19

															ewm:

															Source: Annual Reports 1968-1970, Table C-8.

															[ Footnote 32 ]

															An Analysis of Patent Litigation Statistics, Staff Report of the
Subcommittee on Patents, Trademarks, and Copyrights of the Senate
Committee on the Judiciary, 86th Cong., 2d Sess., 2 (1961)
(Committee Print) (hereafter 1961 Staff Report).

															[ Footnote 33 ] See n 31, supra. The 1961 Staff Report also noted that, during the
"fiscal years 1954-58 . . . nine [patent] trials consumed 20 or
more days." Id. at 2. Further examination of recent
figures from the Administrative Office of the United States Courts
indicates that this statement would also be of questionable
validity today. In fiscal 1968, 38 civil trials that took 20 days
or more to try were terminated. Of these, five, or about 13%, were
patent cases. The comparable figures for fiscal 1969 are 28 civil
trials requiring 20 or more days concluded, seven (25%) of which
were patent cases. In fiscal 1970, 32 such civil cases were
terminated; seven, or about 22%, of these suits were patent cases.
Annual Reports, 1968-1970, Table C-9.

															[ Footnote 34 ]

															"Estoppel and cancellation"

															"(a) In any action in a Federal court in which the issue of the
validity or scope of a claim of a patent is properly before the
court, and the owner of the patent as shown by the records of the
Patent Office is a party or has been given notice as provided in
subsection (c) of this section, a final adjudication, from which no
appeal has been or can be taken, limiting the scope of the claim or
holding it to be invalid, shall constitute an estoppel against the
patentee, and those in privity with him, in any subsequent Federal
action, and may constitute an estoppel in such other Federal
actions as the latter court may determine, involving such patent.
Within thirty days of such adjudication the clerk of the court
shall transmit notice thereof to the Commissioner, who shall place
the same in the public records of the Patent Office pertaining to
such patent, and endorse notice on all copies of the patent
thereafter distributed by the Patent Office that the patent is
subject to such adjudication."

															"(b) In any action as set forth in subsection (a) of this
section, upon a final adjudication from which no appeal has been or
can be taken that a claim of the patent is invalid, the court may
order cancellation of such claim from the patent. Such order shall
be included in the notice to the Commissioner specified in
subsection (a) of this section, and the notice of cancellation of a
claim shall be published by the Commissioner and endorsed on all
copies of the patent thereafter distributed by the Patent
Office."

															"(c) In any action in a Federal court in which the validity or
scope of a claim of a patent is drawn into question, the owner of
the patent, as shown by the records of the Patent Office, shall
have the unconditional right to intervene to defend the validity or
scope of such claim. The party challenging the validity or scope of
the claim shall serve upon the patent owner a copy of the earliest
pleadings asserting such invalidity. If such owner cannot be served
with such pleadings, after reasonable diligence is exercised,
service may be made as provided for in the Federal Rules of Civil
Procedure and, in addition, notice shall be transmitted to the
Patent Office and shall be published in the Official Gazette."

															[ Footnote 35 ]

															"Cancellation by court"

															"(a) In any action in a Federal court in which the issue of the
validity of a claim of a patent is drawn into question, and the
owner of the patent is shown by the records of the Patent Office is
a party or has been given notice as provided in subsection (b) of
this section, the court may, upon final adjudication, from which no
appeal has been or can be taken, holding the claim to be invalid
after such claim has previously been held invalid on the same
ground by a court of competent jurisdiction from which no appeal
has been or can be taken, order cancellation of such claim from the
patent. Within thirty days of such order the clerk of the court
shall transmit notice thereof to the Commissioner, who shall place
the same in the public records of the Patent Office pertaining to
such patent, and notice of cancellation of the claim shall be
published by the Commissioner and endorsed on all copies of the
patent thereafter distributed by the Patent Office."

															"(b) In any action in a Federal court in which the validity of a
claim of a patent is drawn into question, the owner of the patent,
as shown by the records of the Patent Office, shall have the
unconditional right to intervene to defend the validity of such
claim. The party challenging the validity of the claim shall serve
upon the patent owner a copy of the earliest pleadings asserting
such invalidity. If such owner cannot be served with such
pleadings, after reasonable diligence is exercised, service may be
made as provided for in the Federal Rules of Civil Procedure and,
in addition, notice shall be transmitted to the Patent Office and
shall be published in the Official Gazette."

															[ Footnote 36 ] See, e.g., Hearings on General Revision of the Patent
Laws before Subcommittee No. 3 of the House Committee on the
Judiciary, 90th Cong., 1st and 2d Sess. (1967-1968); 1967 Senate
Hearings, supra, n 28. In House Hearings, testimony on in rem invalidity
provisions covered the full spectrum of opinion. The Patent Section
of the American Bar Association was opposed. House Hearings
464-465. The Department of Justice favored it. Id. at 622.
The Judicial Conference of the United States approved the provision
in principle. Report of the Proceedings of the Judicial Conference
of the United States, Feb. and Sept. 1968, p. 81. Testimony in the
Senate Hearings was also varied.

															[ Footnote 37 ]

															Although these bills died in committee, it is noteworthy that,
by ascribing binding effect to the first federal declaration of
invalidity, some of the proposed provisions went beyond mere
abrogation of Triplett's mutuality principle. Had the
statutes been enacted as proposed, see nn. 34-35 supra, the question of
whether the patentee had a full and fair opportunity to litigate
the validity of his patent in the first suit would apparently have
been irrelevant once it was shown that the patentee had received
notice that the validity of his patent was in issue.

															[ Footnote 38 ] See generally Sears, Roebuck & Co. v. Stiffel Co., 376 U. S. 225 , 376 U. S.
229 -230 (1964); Compco Corp. v. Da-Brite
Lighting, 376 U. S. 234 (1964); Kennedy, Patent and Antitrust Policy: The Search for a
Unitary Theory, 35 Geo.Wash.L.Rev. 512 (1967).

															[ Footnote 39 ] United States v. Bell Telephone Co., 128 U.
S. 315 , 128 U. S. 357 ,
370 (1888); see also Katzinger Co. v. Chicago Mfg. Co., 329 U. S. 394 , 329 U. S.
400 -401 (1947); Cuno Corp. v. Automatic Device
Corp., 314 U. S. 84 , 314 U. S. 92 (1941); A. & P. Tea Co. v. Supermarket Corp., 340 U. S. 147 , 340 U. S.
154 -155 (190) (concurring opinion).

															[ Footnote 40 ] See also Brulotte v. Thys Co., 379 U. S.
29 (1964); International Salt Co. v. United
States, 332 U. S. 392 (1947); United States v. Gypsum Co., 333 U.
S. 364 , 333 U. S. 389 (1948); Scott Paper Co. v. Marcalus Co., 326 U.
S. 249 (1945); Morton Salt Co. v. Suppiger Co., 314 U. S. 488 , 314 U. S.
491 -492 (1942); Ethyl Gasoline Corp. v. United
States, 309 U. S. 436 , 309 U. S.
455 -459 (1940); International Business Machines
Corp. v. United States, 298 U. S. 131 (1936); Carbice Corp. v. American Patents Corp., 283 U. S. 27 (1931); Motion Picture Patents Co. v. Universal Film Co., 243 U. S. 502 (1917).

															[ Footnote 41 ]

															In Walker Process Equipment, Inc. v. Food Machinery &
Chemical Corp., 382 U. S. 172 (1965), the defendant in an infringement action was permitted to
counterclaim for treble damages under § 4 of the Clayton Act by
asserting that the patent was invalid because procured or enforced
with knowledge of fraud practiced on the Patent Office, "provided
the other elements necessary to a [monopolization case under § 2 of
the Sherman Act] are present." Id. at 382 U. S.
174 .

															[ Footnote 42 ] See MacGregor v. Westinghouse Electric & Mfg. Co., 329 U. S. 402 , 329 U. S. 407 (1947); Katzinger Co. v. Chicago Mfg. Co., 329 U.S. at 329 U. S.
398 -401; Scott Paper Co. v. Marcalus Co., supra;
Sola Electric Co. v. Jefferson Electric Co., 317 U.
S. 173 (1942); Westinghouse Electric & Mfg. Co.
v. Formica Insulation Co., 266 U. S. 342 (1924); Pope Mfg. Co. v. Gormully, 144 U.
S. 224 , 144 U. S. 234 (1892).

															[ Footnote 43 ] See Sears, 376 U.S. at 376 U. S.
229 -231; see also Beckman Instruments, Inc. v.
Technical Development Corp., 433 F.2d 55, 58-59 (CA7 1970); Kraly v. National Distillers & Chemical
Corp., 319 F.
Supp. 1349 (ND Ill.1970).

															[ Footnote 44 ]

															Including, apparently, a suit on a patent previously held
invalid and as to which the second court can find no reasonable
argument for validity. See Tidewater Patent Development Co. v.
Kitchen, 371 F.2d 1004, 1013 (CA4 1966); Dole Valve Co. v.
Perfection Bar Equipment, Inc., 318 F. Supp. 122 (ND
Ill.1970).

															[ Footnote 45 ] See nn. 31-33 supra, and accompanying text.

															[ Footnote 46 ] See, e.g., cases cited n 5, supra; Brief for Petitioner B-T 13-14; Brief
for the United States as amicus curiae 28 and 32 n.
12.

Summary: The case of Blonder Tongue v. University of Illinois Found. revolved around the validity of a patent for a television antenna designed for color reception. The patent was first declared invalid due to obviousness in a previous case, University of Illinois Foundation v. Winegard Co. However, in this case, the Supreme Court overruled the concept of res judicata, which would have prevented the patentee from being able to assert the patent's validity in subsequent litigation. The Court's decision allowed for an estoppel plea, where a party could argue that a patent previously declared invalid should not be infringed upon again. This ruling set a precedent for future patent infringement cases, allowing for more flexibility in patent litigation.