Standard Industries, Inc. v. Tigrett Industries, Inc.
Headline: Patent-license fee dispute: Court affirms lower-court award by an equally divided vote, leaving a damages judgment in place while a dissent urges allowing a new challenge to patent validity.
Holding:
- Leaves the lower-court damages award intact despite intervening change in patent law.
- Prevents Supreme Court resolution of the patent’s validity due to an evenly split Court.
- Dissent urges allowing the licensee to challenge the patent and remanding the case.
Summary
Background
A patent holder sued a licensee company for payments said to be due under a patent-licensing agreement. The trial court found the licensee’s product used the patented invention and awarded damages. The Court of Appeals for the Sixth Circuit affirmed that judgment before a major Supreme Court decision changed patent-law rules for licensees.
Reasoning
After the appeals court decision, this Court decided Lear, which held that a licensee could challenge a patent’s validity. The company that had lost below then tried to raise that validity challenge here, but the opposing side argued the issue had not been raised earlier. The Supreme Court issued a per curiam decision that the judgments below are affirmed by an equally divided Court, so the Court did not reach or resolve the new validity argument.
Real world impact
Because the Justices were evenly split, the lower-court rulings and the damages award remain in effect. The Lear decision had changed the law to allow licensees to contest patents, but this tied decision does not apply that change to this case at the Supreme Court level. The practical result is that this company’s attempt to reopen patent validity failed in this Court.
Dissents or concurrances
Justice Black, joined by Justice Douglas, dissented and would have vacated the judgments and sent the case back so the patent’s validity could be decided in light of Lear.
Opinions in this case:
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