This case comes before the court on plaintiffs’ request, filed Novetaber 4, 1975, for review by the court of the recommended decision, filed August 1, 1975, by former Trial Judge Hal D. Cooper (since resigned to enter private practice of law), pursuant to Buies 54 and 55, on defendant’s motion for partial summary judgment and defendant’s supplemental motion for summary judgment. Also before the court is defendant’s motion, filed December 10,1975, to strike affidavits of Bobert L. Harmon and Bobert C. McColloch which comprise the Appendix to plaintiffs’ brief to the court. The case has been submitted on the briefs and oral argument of counsel.
The affidavits comprising the Appendix to plaintiffs’ brief amount to a supplementation of the record on review by the court which is generally not permitted and for which the Buies of the court do not provide. Therefore, defendant’s motion to strike the affidavits is granted.
• Since the court agrees with the recommended decision of the trial judge, as hereinafter set forth, it hereby affirms and adopts the same as the basis for its judgment in this case. It is therefore concluded that plaintiffs are not entitled to recover and defendant’s motions for summary judgment are granted and the petition is dismissed.
OPINION OP TRIAL JUDGE
Belying on Blonder-Tongue, Inc. v. University of Illinois Foundation,
For the reasons stated hereinafter, it is concluded that collateral estoppel does apply and that it forecloses any relief to. plaintiffs in this case.
The Bourns patent
The text of the patent indicates that the ease and accuracy of adjustment achieved with the disclosed potentiometer is the result of using a precision-machined rotatable screwshaft which may be adjusted by a screwdriver. The novel mount consists of the holes in the base. The patent specification does not otherwise indicate how the disclosed device achieves the claimed objectives. For example, although the patent states that several of the component parts may be made from a molded plastic material, there is nothing describing what it is in the arrangement or combination of those components that permits miniaturized manufacture of the device from high-quality materials, or how the device is able to withstand extreme ranges of temperature.
IX
With respect to the previously adjudicated claims, plaintiffs apparently concede that they did receive a full and fair opportunity to litigate the validity issues in the Dale case and that the trial court did understand the technical subject matter and issues. Their only defense to the collateral estoppel plea, as applied to those claims, is the argument that it should not be applied retroactively. In support of that argument, plaintiffs have submitted the affidavit of a corporate official in which it is stated that, in reliance on the prior rule in Triplett v. Lowell,
That same argument was rejected in Bourns, Inc. v. Allen-Bradley Co.,
Nor can there be any doubt that prior district court decisions are a sufficient basis for applying the estoppel. Iron Ore Co. of Canada v. Dow Chemical Co., 177 USPQ 34 (D. Utah 1973), aff'd,
Finally, with respect to plaintiffs’ contention that they relied on the Triplett rule in dismissing their appeal in the Dale case, it is difficult to accept that contention for the same reasons the Seventh Circuit rejected it. The Triplett rulé would have permitted further litigation irrespective of whether the appeal had been prosecuted so it is difficult to understand how that rule was decisive in the decision to dismiss the appeal. The clear inference to be drawn from plaintiffs’ actions is that they abandoned the appeal because they did not believe it would be successful.
IVhere there is no genuine issue of any material fact, and applicable principles of law indicate that collateral estoppel should be applied, summary judgment is appropriate. Jones v. Zurich General Accident & Liability Ins. Co.,
Ill
As to the previously unadjudicated claims, defendant contends that the issues relevant to a determination of the non-obviousness of those claims are identical to the issues adjudicated in Dale and that collateral estoppel should apply to them as well.
In support of its contention, defendant has submitted a series of claim-comparison charts which compares each of the claims with adjudicated claim 11 and also compares claim 19 with adjudicated claim 20. With respect to the differences revealed by this comparison, defendant has submitted a number of patents to show that those differences “do not lend patentable significance,” to the claimed combination and that, therefore, they do not alter the issues bearing on the obviousness determination. For example, a comparison of unadjudi-cated
In opposition to the motion, plaintiffs’ basic position is that collateral estoppel under Blonder-Tongue is only applicable to the specific claims actually litigated in the prior action. In support of that position, plaintiffs cite their own prior case, Bourns, Inc. v. Allen-Bradley Co., supra, in which the Seventh Circuit reversed the District Court’s application of estoppel to unadjudicated claims. Plaintiffs maintain that any application of collateral estoppel to unadjudicated claims would be contrary to the patent statute which provides that each claim of a patent is to be presumed valid and would, therefore, be a denial of due process.
Plaintiffs’ position cannot be accepted for the reason that it gives too restrictive an application to the collateral estoppel doctrine. As this court stated in Carter-Wallace, Inc. v. United States,
There is no reason to employ a different approach in a patent context by looking to the claims litigated instead of to the issues that were decided. Courts have long recognized that the claims of a patent may be repeated and duplicated, varying one from the other only in certain minor details. See, e.g., Peerless Roll Leaf Co. v. H. Griffin & Sons Co.,
In the usual case, the claims may be multiplied either because there are multiple facets to the invention and claims to the separate parts and subparts are necessary to protect the invention, Wm. B. Scaife & Sons Co. v. Falls City Woolen Mills,
For tire foregoing reasons, the precedent of Bourns, Inc. v. Allen-Bradley Co., supra, insofar as it sets out a rule which would 'automatically limit collateral estoppel only to the claims actually litigated is considered to be unpersuasive and is not followed here. Father, the correct view is believed to be that of the Sixth 'Circuit in Westwoood Chemical, Inc. v. Molded Fiber Glass Body Co.,
Plaintiffs also argue that defendant’s claim comparisons, aside from the merits, improperly treat the adjudicated claims as prior art, in an effort to show that the differences between the claims are obvious. Plaintiffs assert that each claim of a patent is entitled to a presumption of validity, that each claim is to be treated as a separate and complete invention, that the pertinent standard is as to the differences between the prior art and the claims, and that invalidity of a claim does not transform the subject matter of that claim into prior art.
However, there is nothing in any of those long-accepted principles which appears to foreclose, or is inconsistent with, a determination that the issues bearing on validity of two separate claims are substantively the same. To assess the identity of those issues, it is convenient to compare the adjudicated and unadjudicated claims. Obviousness of the unadjudicated claims not being an issue, it is clear that the differences revealed by such comparisons must be evaluated, not in terms of obviousness under a domino approach, but, rather, in terms of the Graham issues. Where the differences revealed by a comparison of the claims do not vary the relevant issues bearing on obviousness, collateral estoppel should apply. Westwood Chemical, Inc. v. Molded Fiber Glass Body Co.,
Turning to the merits of the claim comparison,
There are essentially two features included in some of the claims not found in the adjudicated claims. One is the use of hollow rivets in the mounting holes to secure the cover to the base (claims 3, 6, and 12) and the other is the cooperation of the cover with the slider to restrain the slider from rotation (claims 4, 6, and 7). As noted previously, defendant has cited prior art showing these features and urges that they are of no importance to the combination as a whole. Most significantly, plaintiffs do not contest this, offering not one word that
That the subject matter of a claim must be considered as a whole is a position with which there is “no quibble.” Graham, supra at 32. But the practicalities are to look to the distinguishing features incorporated into the claims and the validity determination necessarily focuses on those features. Id. at 34. Where, as here, the distinguishing features of the adjudicated and unadjudicated claims appear to be the same, and neither the text of the patent nor the plaintiffs here attribute any importance or significance to the'additional elements included in the unadjudicated claims, it is difficult to justify a further trial merely because of the presence of those elements in the claims.
The comparison of claims 3 and 11 illustrates this point. Both claims are directed to the same combination of elements, including the mounting holes in the base; claim 3, however, adds hollow rivets in the mounting holes as an additional element in the claim. The Dale court concluded that it was the mounting-hole arrangement which distinguished claim 11 from the prior art and it is clear that this is one of the principal features of the patent. Yet, the Dale court found that to be obvious in the combination claimed. Claim 3 presents the question of whether that same mounting arrangement in the same combination of elements raises a new issue simply because hollow rivets are now included in the combination. Defendant has cited a number of patents disclosing electrical components connected by hollow rivets with mounting posts extending through the rivets. While plaintiffs, on the other hand, would apparently say that the rivets raise a new issue, there is not even an argument directed to the hollow rivets, much less a substantive showing, that this is so. Based on defendant’s showing, the conclusion is inescapable that the use of hollow rivets does not distinguish the claim from the prior art and that if there is anything nonobvious in the combination, it must reside in the concept of mounting holes in the base of a potentiometer. 'Since the Dale court has already considered that concept and declared it to be obvious, further consideration of the obviousness or nonobviousness of the mounting arrangement, albeit in combination with hollow rivets, would afford the patentee, contrary to. the philosophy of Blonder-Tongue, a second chance to litigate what he had a full and fair opportunity to do in the first suit.
The comparison of claims 4 and 11 further illustrate how, notwithstanding differences in language and elements, identical issue are presented. Both claims
Merely because claim 4 describes the base as being of plastic with grooves, and designates the restraining means as the cap, all of which are known in the art, does not appear to raise any new issues with respect to the leadscrew 'actuator, or the patentability of the combination in which it is used. That is particularly so when neither the patent nor the plaintiffs attribute any significance to the additional limitations included in claim 4. Hence, it appears that any inquiry into tbs validity of claim 4 would simply be relitigation of the same issues already decided adversely to the patentee and would be a transparent attempt to overturn the prior obviousness determination. That is improper and collateral estoppel is applicable under such circumstances. Cf. Seminole Nation of Oklahoma v. United States,
Another aspect of plaintiffs’ argument relates to the secondary considerations recognized as relevant in Graham. A substantial portion of their brief is devoted to extolling the virtues of a commercial device identified only as the “Bourns LSAP.” A number of affidavits have been presented in which the Bourns LSAP is described as a “significant and valuable contribution,” “a substantial contribution to the art,” and an innovation of “extraordinary value.” These affidavits, and supporting documentary evidence, tend to establish that the Bourns LSAP satisfied a long felt need for a suitable trimming potentiometer of mina,ture size that would retain its setting (the so-called self-locking feature) under adverse conditions. Further, this evidence tends to support the conclusion that the Bourns LSAP has been a clear commercial success, that it has been imitated and copied by those throughout the industry, and that it has revolutionized the market for devices of this kind.
After full consideration of this evidence, it is concluded that it does not provide an adequate basis for denying the estoppel plea. There may well be situations where, even if identical claims are involved, secondary considerations not available in the first suit will lead to the determination that an estoppel plea should be denied. Cf. In re Herr,
With respect to specific advantages, plaintiffs urge that the attributes of size, resolution, and stability possessed by the Bourns LSAP met a long felt need in the industry. While that argument may be accepted as correct, plaintiffs have pointed to nothing in the claims from which it might be concluded that it was the claimed combination that permitted attainment of those desirable goals. Nor is there 'any suggestion that these results are achieved by the combination in the unlitigated claims but were not achieved by the combination of the litigated claims.
The same is true of the contention that the Bourns LSAP succeeded where others failed. Plaintiffs have submitted a list of 29 prior patents which allegedly sought, unsuccessfully to achieve the results attained by the LSAP; however, not a single one of those patents has been submitted to the court, so the argument, insofar as it is based on these patents, remains nothing more than that. While the affidavits do tend to support plaintiffs’ argument, no effort has been made to •demonstrate that it was the particular combination claimed that had anything at all to do with Bourns succeeding where others failed.
As to commercial success, the deposition of Mr. Vaughan, plaintiff’s former sales manager, indicates that it was attributable to a number of factors which included a capable field manager and an aggressive sales program, as well as the device itself. This is insufficient to establish commercial success as a relevant consideration in an evaluation of the claims here in issue. Ellicott Machine Corp. v. United States,
Plaintiffs’ showing that the industry copied the Bourns LSAP suffers from the same problem. The comparison, to be relevant, must be with the claims in dispute, not between competitors’ devices and plaintiffs’ commercial device which may or may not be covered by the patent. Cf. Hartford Empire Co. v. Obear-Nester Glass Co.,
The depositions of Vaughan and Harrison are the only substantive showings which link any of the secondary considerations urged by plaintiffs with any of the elements found in the claims. Harrison testified that the threaded screwshaft on which the slider was supported was the “main feature” of Bourns’ device and that it was this feature which provided adjustability and resistance to shock and vibration. Vaughan testified that the adjustability and friction of the leadscrew were advantages of the Bourns LSAP. It is noted, however, that the Dale court not only considered this feature but did so in light of what it described as the great commercial success of plaintiffs’ device. Hence, to the extent this evidence establishes secondary considerations pertinent to an element of the claimed combination, it still does not raise any issue different from that already decided in Dale.
The fact is that the considerations of commercial success and long felt need, and the advantages of greater accuracy, resistance to vibration, size, configuration, adjustability, and self-locking were all urged
After reviewing the entirety of plaintiffs’ presentation, and eliminating for lack of demonstrated relevance the arguments regarding the advantages and secondary considerations, plaintiffs’ only basis for opposing the estoppel is the argument that the claims present 'a combination of elements different from the combination contained in the adjudicated claims. Pertinent to that argument, unsupported as it is by a factual showing, is the statement in Ashe v. Swenson,
IY
The Supreme 'Court has observed that, in the end, application of the estoppel “will necessarily rest on the trial court’s sense of justice and equity.” Blonder-Tongue, supra, 402 U.S. at 334. In the circumstances of tbis case, I am satisfied that it is just and equitable to allow the plea of estoppel here.
The Dale suit was in a forum and against a defendant of plaintiffs’ own choosing. The claims at issue in that case squarely presented the features of Bourns’ potentiometer bearing on the stated objects of the invention as set out in the patent. In particular, the leadscrew actuated feature, in combination with the base, cover, resistor, slider, contacts, and terminal leads, was present in almost every claim litigated and the mounting arrangement was present in many of those-claims. In support of the validity of the claims in Dale, plaintiffs urged, unsuccessfully, virtually all of the secondary-considerations, as well as, the advantages, argued here,
None of the other traditional factors that normally obviate-the estoppel, see, Hilkovsky v. United States, supra at 464-66,
The Dale litigation was pending for seven years in a jurisdiction with no backlog; the trial itself lasted six days and produced a transcript of 610 pages; and the potential recovery was over $1,000,000. Thus, appellants had ample incentive to litigate the case to the end. [Bourns, Inc. v. Allen-Bradley Co., supra,480 F. 2d at 126 .]
Finally, plaintiffs’ presentation indicates that some 18 competitors have leadscrew actuated potentiometers which, in plaintiffs’ words, are “slavish imitations” of the Bourns device. One of those is the potentiometer marketed by Dale Electronics and which formed the basis of the Dale litigation. Having had an opportunity to litigate the culpability of Dale for its alleged copying and infringement, and having been unsuccessful, neither justice nor equity would seem to require that plaintiffs be afforded a further opportunity to continue the battle with the other 17 competitors through the mechanism of a suit against their customer, the United States. Bather, justice and equity would seem to suggest that, one of the 18 manufacturers having been judicially declared to be' free to compete without liability to plaintiffs, the time and expense of a full-blown infringement trial should not be required before the other 17 makers of essentially the same thing should be permitted to occupy a similar competitive position. Of course, no broad rule covering such situations; can be formulated and there may be circumstances where further litigation would be appropriate; nevertheless, to justify such litigation, in light of the goals and objectives of Blonder-Tongue, it should require something more substantial than a technicality that different claims are being asserted.
It is concluded that, despite verbal differences in the claims, issues identical to those in Dale are presented here and that,, having had their one day in court on those issues, plaintiffs should now 'be collaterally estopped to relitigate those issues against defendant.
Defendant’s motions for summary judgment are granted and the petition is dismissed.
CONCLUSION
Upon the foregoing opinion, which is made a part of the judgment herein, the court concludes as a matter of law that plaintiffs are not entitled to recover and the petition is-dismissed.
Notes
The Bourns patent application was filed January 12, 1953, and the .patent was Issued January 15,1957.
The Vaughan deposition, submitted by plaintiffs, indicates that the ability to withstand temperature changes is the result of using a precious metal wire for the wire-wound resistance element. The patent discloses the wire merely as “fine resistance wire.”
There has been litigation on this patent since early 1957. üp to the filing of this case, a total of seven actions had been instituted on the basis of the ’926 patent. An earlier Court of Claims suit was dismissed without prejudice, as was a suit against a private defendant. Two others were terminated by consent judgments and one was settled by a license agreement. Subsequent to Dale suit was filed in the Northern District of Illinois, Bourns, Inc. v. Allens Bradley Co., in which plaintiffs sought to maintain it as a class action. Palling that, plaintiffs filed four additional infringement suits in three other districts, all of which are still pending.
As discussed, infra, the Seventh Circuit reversed the District Court’s application of the estoppel to the unadjudicated claims.
Claim 3 provides:
"A variable resistor comprising: a housing comprising a base member and a cap; a resistance element mounted in said housing; a slider mounted in said housing; screw means engaging said slider and adapted upon turning to cause longitudinal travel of said slider, means restraining said slider against rotation ; a contact member on said slider engaging said resistance element; and a pair of spaced hollow rivets, each extending through said base member and said cap and securing said cap to said base member, whereby a plurality of like resistors may be assembled upon parallel posts extending through said hollow rivets.”
Claim 11:
“A variable resistor comprising: a base member having a pair of upstanding portions at opposite ends thereof; a resistance element and a conductor mounted side by side on said base member; screw means rotatably mounted between said upstanding end portions; means engaging said screw means to prevent longitudinal movement thereof while permitting rotation thereof; a slider having threaded engagement with said screw means; spring contact members carried by said slider and wiping on said resistance element and conductor; means restraining said slider against rotation, whereby turning of said screw means causes said spring contact members to travel over said resistance element and said conductor, and means for mounting said resistor, including apertures extending transversely thru said upstanding end portions of said base member to receive parallel mounting posts.”
As the proponent of the estoppel plea, defendant has the burden not only of establishing by a preponderance of all the evidence that identical issues are presented by the adjudicated and unadjudicated claims, Westwood Chemical, Inc. v. Molded Fiber Glass Body Co., supra, but also of showing that, on this motion for summary judgment, there are no genuine issues of material fact relevant to that determination.
Claim 4 provides:
“A variable resistor comprising: a base member of molded plastic material; said base member having a pair of parallel longitudinal grooves therein and a pair of spaced upstanding portions; a resistance element mounted in one of said grooves; a conductor mounted in the other of said grooves; screw means mounted between said spaced portions; means engaging said screw means to prevent longitudinal movement thereof while permitting rotation thereof; a slider having a threaded engagement with said screw means; spring contact members carried by said slider and engaging said resistance element and conductor ; and a cap mounted on said base member, enclosing said resistor and restraining said slider against rotation whereby turning of said screw means causes said spring contact members to travel over said resistance element and. said conductor.”
The Vaughan deposition illustrates the difficulty -with plaintiffs’ presentation. Vaughan testified at some length regarding a device identified as “Plaintiffs’ Exhibit 238.” That exhibit was not made of record in the deposition and has not been presented to the court so its substance cannot be ascertained, upon re-direct, the following testimony was elicited :
“Q. Just so that we are clear on the subject, Mr. Vaughan, when you were referring to the sales for the Trimpot Division, were you referring to the sales of leadscrew actuated potentiometers as exemplified by Plaintiffs’ Exhibit 23S, which I showed you ?
“A. Ves, I was talking solely about leadscrew actuated potentiometers, not necessarily that model, but as a general class of product, that is what I was .talhing about." [Emphasis supplied.]
It is, of course, settled that a party contesting a motion for summary judgment must come forward with something more than arguments to show that there is a factual issue to be resolved. Hartwig v. United States,
Plaintiffs do contend that much of the evidence in support of these considerations was newly discovered in the litigation subsequent to Dale. That contention was rejected by both the District Court and the Seventh Circuit in Bourns, Inc. v. Allen-Bradley Co.,