Citation
Blonder‑Tongue Laboratories v. University of Illinois Foundation, 402 U.S. 313 (1971).
Parties
- Plaintiff: Blonder‑Tongue Laboratories
- Defendant: University of Illinois Foundation
Procedural History and Background of Blonder‑Tongue Laboratories v. University of Illinois Foundation
In Blonder‑Tongue Laboratories v. University of Illinois Foundation, the plaintiff, Blonder‑Tongue Laboratories, originally held a patent that it claimed was infringed by a third party. In that initial litigation, the courts ruled against Blonder‑Tongue Laboratories, declaring the patent invalid after full consideration. Despite this adverse ruling, Blonder‑Tongue Laboratories initiated a subsequent lawsuit against the University of Illinois Foundation, alleging infringement of the same patent.
The lower courts permitted this second suit to proceed based on existing precedent at the time, particularly the decision in Triplett v. Lowell, which allowed a patent holder to relitigate the validity of a patent against different defendants despite an earlier invalidity ruling. The University of Illinois Foundation challenged this, arguing that the earlier determination of invalidity should preclude the new litigation.
The Supreme Court granted certiorari in Blonder‑Tongue Laboratories v. University of Illinois Foundation to address whether the principle of collateral estoppel (issue preclusion) applied to patent validity determinations against different defendants in successive infringement suits.
Facts of Blonder‑Tongue Laboratories v. University of Illinois Foundation
Blonder‑Tongue Laboratories initially sued a third party for infringing a patent owned by the plaintiff. After full litigation in that first suit, the courts determined that the patent was invalid. Subsequently, Blonder‑Tongue Laboratories filed a second suit against the University of Illinois Foundation, alleging infringement of the same patent.
Under prevailing doctrine, which originated from Triplett v. Lowell, Blonder‑Tongue Laboratories was allowed to pursue the new action despite the earlier adverse judgment. The trial court and appellate court both followed this rule and permitted the second lawsuit to continue. The University of Illinois Foundation contested this on appeal, leading to the Supreme Court’s involvement.
Issue
The central issue in Blonder‑Tongue Laboratories v. University of Illinois Foundation was whether a patent holder who has had the validity of a patent determined adversely in one infringement suit may be barred from relitigating the same patent’s validity in a subsequent suit against a different defendant.
More specifically:
Does the doctrine of collateral estoppel prevent a patentee from asserting the same patent and relitigating its validity in infringement actions against multiple defendants once the patent has been declared invalid in a prior suit?
Blonder‑Tongue Laboratories v. University of Illinois Foundation Judgment
In Blonder‑Tongue Laboratories v. University of Illinois Foundation, the Supreme Court held that a patent holder who has lost a full and fair adjudication on the validity of a patent in one lawsuit is estopped from relitigating the patent’s validity in subsequent infringement lawsuits against other defendants.
The Court ruled that once the issue of patent validity has been fully and fairly litigated and resolved adversely to the patent holder, the doctrine of collateral estoppel bars the patent holder from bringing new infringement suits based on the same patent against different parties.
Rule of Law
The Supreme Court in Blonder‑Tongue Laboratories v. University of Illinois Foundation established that:
- A patent holder is precluded from relitigating the validity of a patent once a court has determined the patent to be invalid after full and fair litigation, even if the patent holder sues a different defendant.
- Collateral estoppel applies in patent cases to promote judicial economy, fairness, and finality in patent disputes.
- An exception exists where the patent holder did not have a full and fair opportunity to litigate the issue in the earlier case. If this is the case, the patent holder may be permitted to pursue a subsequent action.
Reasoning in Blonder‑Tongue Laboratories v. University of Illinois Foundation
Justice White, writing for a unanimous Court in Blonder‑Tongue Laboratories v. University of Illinois Foundation, explained that the prior rule from Triplett v. Lowell was outdated and inconsistent with modern principles of collateral estoppel. The Court reasoned that allowing repeated litigation of the same patent validity issues against multiple defendants was inefficient, wasteful, and unjust.
The Court highlighted several considerations:
- Judicial Economy: Permitting relitigation of patent validity against multiple defendants results in redundant litigation, wasting judicial resources and overburdening courts.
- Fairness and Finality: The doctrine of collateral estoppel encourages the finality of decisions. Allowing the patent holder multiple attempts to prove validity undermines the credibility and stability of judicial rulings.
- Public Interest and Patent Policy: There is a strong public interest in certainty regarding patent validity. Once a patent is declared invalid, permitting repeated suits interferes with commerce and the public’s reliance on patent rights.
The Court acknowledged that there could be exceptions if the earlier litigation was flawed or incomplete, denying the patent holder a full and fair opportunity to litigate the issue. In such cases, the subsequent suit might proceed.
The decision in Blonder‑Tongue Laboratories v. University of Illinois Foundation explicitly overruled the earlier holding in Triplett v. Lowell that had exempted patent cases from the normal application of collateral estoppel.
Conclusion
Blonder‑Tongue Laboratories v. University of Illinois Foundation is a landmark decision that established the application of collateral estoppel to patent infringement litigation involving multiple defendants. It emphasized the importance of finality in patent validity judgments and curtailed the practice of “multiple bites at the apple” by patentees seeking to enforce patents against successive defendants despite earlier invalidity rulings.