Byron White

“ Whether Adkins can enforce his contract for royalties if his patent is found to be invalid cannot be shoehorned into the licensee-estoppel question, and by no stretch of the imagination can it be included within the scope of the question raised and litigated by the parties in this case. In the courts below Lear wanted to challenge Adkins' patent only for the purpose of showing that Adkins was entitled to no recovery under the terms of the contract itself, either because of a failure of consideration or because the contract had been legally terminated or could be legally terminated. ”

“ Given Lear's failure below to 'specially set up or claim' the federal bar to collection of royalties in the event Adkins' patent was invalidated, and without the California Supreme Court's 'final judgment' on this issue, I doubt our jurisdiction to decide the issue. But even if jurisdiction exists, the Court should follow its characteristic practice and refuse to issue pronouncements on questions not urged or decided in the state courts. ”

“ None of the questions presented by Lear's petition for certiorari comes even close to the issue to which the Court now addresses itself-an issue which will arise only if Lear can and does challenge the patent, if the patent is declared invalid, if Adkins nevertheless seeks to enforce the agreement, and if Lear interposes a defense based on federal law.
This seems a poor case for waiving our Rules. In the first place the question of validity has not been reached by the California Supreme Court, and when it is the patent may withstand attack. ”