Regardless of whether there would be mutuality of estoppel, a patentee whose patent is held invalid in his suit against one alleged infringer may be precluded, under the doctrine of collateral estoppel, from asserting the validity of the patent in a suit against a different alleged infringer,
Petitioner patent licensor challenged an order of the Court of Appeals for the Seventh Circuit, which affirmed findings that respondent assignor's patent for a high quality television antenna for color reception was both valid and infringed by petitioner, that claim 5 of the petitioner's patent was invalid for obviousness (a finding by an appeals court in another circuit), and that petitioner's unfair competition and antitrust counterclaims were properly dismissed. Petitioner sought certiorari, assigning the conflict between the circuits as to the validity of respondent's patent as a primary reason for granting the writ. Petitioner sought modification of case law holding that a determination of patent invalidity was not res judicata as against the patentee in subsequent litigation against a different defendant. Petitioner argued the precedent should be modified to provide for comity on estoppel grounds where substantially the same documentary evidence was before both courts, and where respondent had the chance to present witnesses in the earlier litigation but failed to do so. The Supreme Court granted certiorari in order to readdress the issue from Triplett v. Lowell, 297 U.S. 638 (1936).
Is a determination of patent invalidity res judicata as against the patentee in subsequent litigation against a different defendant?
The Court held that Triplett v. Lowell was overruled to the extent it foreclosed a plea of estoppel by one facing a charge of infringing a patent that had once been declared invalid. Given its partial overruling of Triplett v. Lowell, the Court reversed the judgment because Triplett v. Lowell precluded petitioner from pleading estoppel, and respondents never had an opportunity to challenge the appropriateness of a plea of estoppel. The judgment of the Court of Appeals was VACATED and the cause is REMANDED to the district court.