William O. Douglas

“ The District Court adjudged a claim of a patent valid although it dismissed the bill for failure to prove infringement. We held that the finding of validity was immaterial to the disposition of the cause and that the winning party might appeal to obtain a reformation of the decree. To hold a patent valid if it is not infringed is to decide a hypothetical case. [2] But the situation in the present case is quite different. We have here not only bill and answer but a counterclaim. ”

“ It may very well be that one who infringes a patent should be entitled to obtain a declaration as to its validity even though he is under no contractual obligation to pay royalties as a licensee. The existence of an invalid patent may substantially impair the economic position of those who market articles which infringe such a patent, even though no infringement suits may be immediately threatened. Potential purchasers may naturally be reluctant to establish business relations upon so insecure a basis. ”

“ If we are to consider the correctness of the ruling that the issues relating to the validity of the reissue patents are not 'justiciable', I find it too difficult to accept the reasoning of my Brethren. The Court's conclusion that the Circuit Court of Appeals erred in finding 'mootness' as to the questions raised by the counterclaim rests substantially upon the notion that a controversy still exists because the defendants are laboring under the 'heavy' obligation of paying royalties under the license agreement. ”