MONSANTO COMPANY, Plаintiff-Appellee, v. DAWSON CHEMICAL COMPANY and Crystal Chemical Company, Defendants-Appellants.
No. 30687.
United States Court of Appeals, Fifth Circuit.
June 8, 1971.
Rehearing Denied and Rehearing En Banc Denied Sept. 15, 1971.
443 F.2d 1035
Thus, while we disagree with the reasoning of the district court in reaching the result evidenced by its judgment, we agree that Trust A qualified for the marital deduction. A decision should not be rejected or overturned when the correct rеsult is achieved, even though an incorrect reason is assigned as the basis of the decision. Riley Co. v. Commissioner, 311 U.S. 55, 59, 61 S.Ct. 95, 85 L.Ed. 36 (1940); Lusk v. Eastern Products Corporation, 427 F.2d 705, 708 (4 Cir. 1970).
Affirmed.
Ned L. Conley, John L. McConn, Jr., Butler, Binion, Rice, Cook & Knapp, Houston, Tex., for defendants-appellants.
Garrett R. Tucker, Jr., Houston, Tex., C. Frederiсk Leydig, John E. Rosenquist, Chicago, Ill., Arnold H. Cole, St. Louis, Mo., Wolfe, Hubbard, Leydig, Voit & Osann, Chicago, Ill., Baker, Botts, Shepherd & Coates, Houston, Tex., for plaintiff-appellee.
Before GOLDBERG, GODBOLD and RONEY, Circuit Judges.
GOLDBERG, Circuit Judge:
This is a patent infringement suit be-
The district court held on April 14, 1970, 312 F.Supp. 452, that Monsanto‘s patent on 3, 4-DCPA was valid and that defendants were guilty of infringement. In so doing the court found (1) that 3, 4-DCPA was not anticipated by prior art within the meaning of
In the meantime Monsanto had filed an identical suit involving 3, 4-DCPA in the Eastern District of Pennsylvania against Rohm & Haas Company. In this suit defendant Rohm & Haas stipulated that if Monsanto‘s patent was valid, it had infringed. On February 17, 1970, almost two months before the decision renderеd by the district court in our case, the court in the Eastern District of Pennsylvania rendered its opinion that the Monsanto patent on 3, 4-DCPA was invalid. In so holding that court found (1) that the chemical compound 3, 4-DCPA was anticipated within the meaning of
The district court below recognized that the Rohm & Hаas case presented a prior judgment on an identical subject, saying:
“Before this opinion is concluded, it should be added that the possible effect of the decision in Monsanto Co. v. Rohm & Haas Co., 312 F.Supp. 778 (E.D.Pa.1970) upon the result here reached has been сarefully considered. Even though there is an identity of subject matter between that case and this one, the fact nevertheless remains that there is no identity between the parties defendant, nor for that matter is there any privity between the parties defendant in each respective action. Moreover, the defendants here have placed greater emphasis on certain prior art items, namely, Bienert and Fontein, than did the defendants in Monsanto Co. v. Rohm & Haas Co., supra, though it is not clear whether the court in that case had exactly the same evidence before it as was offered here. The result on
the issues resolved in Monsanto Co. v. Rohm & Haas Co., supra, does not therefore relieve this Court of its judicial travail of reaching its own indеpendent decision on the merits of the case between these parties and on this record, even though this brings about diametrically [1186] opposed decisions on the validity of the same patent against the same attack. There is no res judicata or estoppel by judgment flowing from the earlier decision precluding plaintiff from its day in court against these defendants. Bros, Inc. v. W. E. Grace Mfg. Co., 351 F.2d 208 (5th Cir. 1965); Edward Valves, Inc. v. Cameron Iron Works, supra [286 F.2d 933]; Graham v. Coсkshutt Farm Equipment, 256 F.2d 358 (5th Cir. 1958); Miles v. Mathews, 171 F.2d 38 (5th Cir. 1948).”
At the time the court below concluded that it was not relieved by the Pennsylvania judgment of the “judicial travail” of reaching its own decision on the merits, it was completely correct. The Supreme Court had long agо in Triplett v. Lowell, 1936, 297 U.S. 638, 56 S.Ct. 645, 80 L.Ed. 949, decided that even though a patent has been held invalid in another suit, the patent owners are entitled to attempt to demonstrate the validity of that same patent against defendants who were not involved in the prior determination of invalidity. In Triplett the Court said:
“While the contention now made is apparently for the first time seriously argued here, this Court has several times held valid the claims of a patent which had been held invalid by a Circuit Court of Apрeals in an earlier suit brought by the same plaintiff against another defendant. Expanded Metal Co. v. Bradford, 214 U.S. 366, 29 S.Ct. 652, 53 L.Ed. 1034; Diamond Rubber Co. v. Consolidated Rubber Tire Co., 220 U.S. 428, 31 S.Ct. 444, 55 L.Ed. 527; Abercrombie & Fitch Co. v. Baldwin, 245 U.S. 198, 38 S.Ct. 104, 62 L.Ed. 240. Before the establishment of the circuit court of appeаls, an adverse decision as to the validity of a patent in one circuit appears not to have foreclosed litigation of the same issue in another, see Barbed Wire Patent, (Washburn & M. Mfg. Co. v. Beat ‘Em All Barbed-Wire Co.) 143 U.S. 275, 12 S.Ct. 443, 450, 36 L.Ed. 154; compare United States v. American Bell Tеlephone Co., 128 U.S. 315, 372, 9 S.Ct. 90, 32 L. Ed. 450. That it does not now is implicitly recognized by the practice established under
section 240(a) of the Judicial Code [28 U.S.C.A. § 347 (a)] and Rule 38(5) of this Court, that certiorari will not usually be granted in patent cases unless there is a conflict in the decisions of Circuit Courts оf Appeals. We conclude that neither the rules of the common law applicable to successive litigations concerning the same subject-matter, nor the disclaimer statute, precludes relitigation of the validity of a patent claim previously held invalid in a suit against a different defendant.”
297 U.S. at 643-644, 56 S.Ct. at 648. Therefore, in April, 1970, when the district court considered the matter, it was obligated by Triplett to make its own independent conclusion concerning the validity оf the Monsanto patent on 3, 4-DCPA.
However, the proverbial slip twixt the cup and the lip occurred. On May 3, 1971, many months after the court below engaged in its ordeal of decision, and, indeed, after oral argument to this court, the Supreme Court with unanimous wisdom reversed its earlier holding in Triplett. The Court ruled that a patent owner is bound by the judgment of patent invalidity in a prior suit against a different defendant unless the patent owner can show that for some reason the рrior judgment should not be given this estoppel effect. Blonder-Tongue Laboratories v. University of Illinois Foundation, 1971, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788, [May 3, 1971].
In Blonder-Tongue the Court said:
“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 alrеady litigated an issue once and lost. As one commentator has stated: ‘Under the tests of time and subsequent developments, the Bernhard decision [Bernhard v. Bank of America Natl. Trust & Savings Ass‘n, 1942, 19 Cal.2d 807, 122 P.2d 892] 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 decisions revealed for what it is, as it was written: a shining landmark of progress in justice and law administration.’ Currie, supra, 53 Cal.L.Rev., at 37.
“When these judicial developments are considered in the light of our consistent view—last presented in Lear, Inc. v. Adkins [1969, 395 U.S. 653, 89 S.Ct. 1902, 23 L.Ed.2d 610]—that the holder of a patent should not be insulated from the assertion of defеnses and thus allowed 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 рatent that has once been declared invalid.” 91 S.Ct. at 1453.
Recognizing that collateral estoppel is an affirmative defense which must be pleaded the Court remanded the case to the district court, saying:
“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 сhance 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 respondent never had an opportunity tо challenge the appropriateness of such a plea on the grounds set forth in Part III A of this opinion. 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. Respondent must then be permitted to amend its 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.” 91 S.Ct. at 1453-1454.
In the instant case we have a situation identical to that encountered by the Supreme Court in Blonder-Tongue. At the time the district court made its decision there wаs a final judgment of another court declaring Monsanto‘s patent on 3, 4-DCPA invalid. But for the Triplett doctrine the defendant here could have pled the collateral estoppel effect of this prior judgment. Following the directiоns of the Supreme Court, we remand this case to the district court to allow the defendant to amend its pleading to assert a plea of estoppel. The plaintiff should then be permitted to show the reasons, if any, why estоppel should not be allowed.
In conclusion, we reiterate that the learned trial judge could not have anticipated that the Supreme Court would still the compulsions of Triplett. He was therefore obligated to confrоnt the chemical elements, their homologs, and the other accoutrements of this patent litigation.
Reversed and remanded.
ON PETITION FOR REHEARING AND PETITION FOR REHEARING EN BANC
PER CURIAM:
The Petition for Rehearing is denied and no member of this panel nor Judge in regular active service on the Court having requested that the Court be polled on rehearing en banc, (Rule 35 Federal Rules of Appellate Procedure; Local Fifth Circuit Rule 12) the Petition for Rehearing En Banc is denied.