Standard Industries, Inc. v. Tigrett Industries, Inc.

PETITIONER: Standard Industries, Inc.
RESPONDENT: Tigrett Industries, Inc.
LOCATION: Riverbed of the Arkansas River

DOCKET NO.: 445
DECIDED BY: Burger Court (1969-1970)
LOWER COURT: United States Court of Appeals for the Sixth Circuit

CITATION: 397 US 586 (1970)
ARGUED: Mar 02, 1970
DECIDED: Apr 20, 1970

Facts of the case

Question

Media for Standard Industries, Inc. v. Tigrett Industries, Inc.

Audio Transcription for Oral Argument - March 02, 1970 in Standard Industries, Inc. v. Tigrett Industries, Inc.

Warren E. Burger:

The first case on for argument in Number 445, Standard Industries Incorporated against Tigrett Industries.

Mr. Bader you may proceed whenever you're ready.

Walton Bader:

Thank Your Honor, may it please the Court.

This case involves a patent license agreement which are centered into between the petitioner Standard Industries and the respondent Tigrett Industries.

The agreement provided that Standard Industries was to pay in effect a royalty of 5% of the covered product sales price which is the way the contract read.

And the contract provided also the usual warranty of title.

The patent was in fact in the name of Tigrett Industries, but the assignment was a conditional one.

The agreement of assignment between Tigrett Industries and the inventor, provided that the assignment would become absolutely void if Tigrett Industries made an assignment for the benefit of creditors.

Now on December 29, 1964 after this contract had been entered into, the Tigrett Industries assigned a patent involved to a subsidiary of the petition and known as Jackson Furniture Company which company is not a party to this litigation.

And that assignment provide that the Jackson Furniture Company, the purchaser agrees to abide by all the obligations terms and conditions of a semi herein Tigrett Industries Inc. as more specifically set forth in an agreement dated July 19, 1961 which was the original assignment that I've previously mentioned.

Thereafter, on December 22 -- I'm sorry thereafter on April 26, 1965, Tigrett Industries did make an assignment for the benefit of creditors and it was the position of Standard Industries at that point that the agreement became absolutely void by recent of that fact.

Standard Industries then failed to pay royalties in connection with the patent involved and a suite was brought.

And there were various claims that were made by Tigrett Industries before the trial court.

We don't have to go into those details.

They sort reformation of a contract, sought royalties on every item that Jackson Furniture Corporation had made.

But when the trial court got through, the trial court held that there were two items that was subject to royalties.

One known is the play around, the other known is the golden converter.

Insofar as the play around is concerned, Standard Industries does not contest the validity of that patent or the coverage with respect to the patent applicable to the play around.

However, Standard Industry does contest any coverage with respect to the patent involving the golden convertible.

And that is the issue which I am going to address myself to for a few months.

It was conceded by the trial court and by the appellant court that the patent involved which is patent number 3,162,865 did not have any claim that specifically covered the structure.

Because the claim of a patent, the broadest claim in the case required that they were had to be a pair of space openings in the base plate of the plate patent and that draw springs have to pass through this space openings.

The trial court however held that regardless of the fact that the terms of the claim did not cover the structure.

Nevertheless, by reason of an application and I believe a misapplication of the doctrine of a equivalence as the law presently stands at the present time that this patent still read on the golden convertible structure.

Now I am not going to discuss in my argument whether -- in detail, whether or not the Court should announce a new doctrine with respect to the doctrine of equivalence?

Byron R. White:

So what is the position?

Walton Bader:

I support the position of the Attorney General Mr. Justice Stewart.

Byron R. White:

Well the Attorney General is not a party to this case?

Walton Bader:

No but he failed an amicus brief.

Byron R. White:

Well how about you?