Motoshaver Inc. v. Schick Dry Shaver

• Citation: 100 F.2d 236
• Decision Date: 02 December 1938
• Docket Number: No. 8808.,8808.
• Parties: MOTOSHAVER, Inc., et al. v. SCHICK DRY SHAVER, Inc., et al.
• Court: United States Courts of Appeals. United States Court of Appeals (9th Circuit)

100 F.2d 236 (1938)

MOTOSHAVER, Inc., et al. v. SCHICK DRY SHAVER, Inc., et al.

No. 8808.

Circuit Court of Appeals, Ninth Circuit.

December 2, 1938.

Oscar A. Mellin, of Oakland, Cal., and Kenneth K. Wright, of Los Angeles, Cal., for appellants.

William Gibbs McAdoo, of Los Angeles, Cal., and Abraham Tulin, of New York City, for appellees.

Before DENMAN, MATHEWS, and HEALY, Circuit Judges.

DENMAN, Circuit Judge.

This is an appeal from an order enjoining both appellants, pendente lite, from manufacturing, selling, advertising or offering for sale any shaving implement embodying the invention covered by patent No. 1,721,530¹ and, particularly, the implements called Motoshaver and Dual-Head Motoshaver.

Appellant Dalmo Manufacturing Company, a California corporation, hereinafter called Dalmo, contends (1) that the Southern District of California is not the proper venue of the suit against it and the court, without Dalmo's consent, cannot consider the charged infringement because it is not an inhabitant of that district, maintains no regular and established place of business there, and, (2) that service of process issuing from the District Court for the Southern District of California, served on it, a resident of the Northern District of California, in the Northern District of California, was not valid service. Hence, Dalmo contends, the denial of its motion to dismiss the bill and to quash the service is error.

If, contrary to these contentions, Dalmo be held a party, it makes common cause with appellant Motoshaver, Inc., a California corporation, hereinafter called Motoshaver, and both contend the court erred in ordering the injunction pendente lite. On the latter contention this case differs in no material respect from Nicholl, Inc., v. Schick Dry Shaver, 9 Cir., 98 F.2d 511.

1. The suit as against Dalmo is brought without the proper venue in patent infringement cases.

There is some confusion of the terms "jurisdiction of the subject matter", "jurisdiction of the person" and "venue" in the briefs and cases cited.

Every district court has jurisdiction of the subject matter of patent infringement and, if the defendant appear generally, the court has the power to adjudicate the charges against him. 28 U.S.C.A. § 41(7); General Electric Co. v. Marvel Rare Metals Co., 287 U.S. 430, 435, 53 S.Ct. 202, 77 L. Ed. 408. One of the questions here involved is of venue — that is, whether the Southern District of California is a place in which the suit can be maintained without the defendant's consent. If such a suit is brought against a defendant elsewhere than in the proper venue, he has a waivable privilege to cause its dismissal. Since he may waive the privilege, the suit may be filed in any court which has jurisdiction of the subject matter and the court has the power to retain it until the defendant asserts his privilege. General Electric Co. v. Marvel Rare Metals Co., supra; Lee v. Chesapeake & Ohio R. Co., 260 U.S. 653, 655, 43 S.Ct. 230, 67 L.Ed. 443, holding the word "brought" as used in the general venue section 51 of the Judicial Code (28 U.S.C.A. § 112) means not that the suit cannot be filed elsewhere than in the districts there specified, but that the court may not proceed to litigate it if the defendant claims his privilege. Though not brought in the proper venue, the court may issue its process and, if service is made on the defendant within the court's district, he waives the privilege if he does not assert it "before the expiration of the period allotted for entering a general appearance and challenging the merits". Commercial Cas. Ins. Co. v. Consolidated Stone Co., 278 U.S. 177, 179, 180, 181, 49 S. Ct. 98, 99, 73 L.Ed. 252. It has been held of § 51 that whether or not served in the court's territorial jurisdiction, the defendant, if the suit is not brought in the proper venue, may compel dismissal of the complaint so far as it purports to affect him. Camp v. Gress, 250 U.S. 308, 311, 39 S.Ct. 478, 63 L.Ed. 997.

Concerning jurisdiction in personam, also asserted to have been acquired over Dalmo by service on it outside the Southern District of California, the Supreme Court points out its essential distinction from venue.

"In a civil suit in personam, jurisdiction over the defendant, as distinguished from venue, implies, among other things, either voluntary appearance by him or service of process upon him at a place where the officer serving it has authority to execute a writ of summons. * * *

"Section 51 of the Judicial Code is a general provision regulating venue. The part pertinent here is that, with certain inapplicable exceptions, `no civil suit shall be brought in any District Court against any person by any original process or proceeding in any other district than that whereof he is an inhabitant.' It is obvious that jurisdiction, in the sense of personal service within a district where suit has been brought, does not dispense with the necessity of proper venue. It is equally obvious that proper venue does not eliminate the requisite of personal jurisdiction over the defendant. * * *" Robertson v. Railroad Labor Board, 268 U.S. 619, 622, 623, 45 S.Ct. 621, 622, 69 L.Ed. 1119.

The bill, charging both appellants with acts of infringement of appellees' patent committed in the Southern District of California, was filed in the Southern District of California. On Dalmo's motion to dismiss the bill, because brought out of the proper venue, it established by uncontroverted affidavits that it is neither an inhabitant of nor has it a regular and established place of business in that district.

Because of these facts, Dalmo contends, correctly, that the district court for the Southern District of California is not the place to bring infringement charges against it.

Section 48 of the Judicial Code, 28 U. S.C.A. § 109, limits the venue in patent infringement suits against a non-inhabitant of the district to those districts in which the defendant "shall have committed acts of infringement and have a regular and established place of business". Section 48 is a codification of the Act of Congress of March 3, 1897, which reads:

"Chap. 395. — An Act Defining the jurisdiction of the United States circuit courts in cases brought for the infringement of letters patent.

"Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled,

"That in suits brought for the infringement of letters patent the circuit courts of the United States shall have jurisdiction, in law or in equity, in the district of which the defendant is an inhabitant, or in any district in which the defendant, whether a person, partnership, or corporation, shall have committed acts of infringement and have a regular and established place of business. If such suit is brought in a district of which the defendant is not an inhabitant, but in which such defendant has a regular and established place of business, service of process, summons, or subpoena upon the defendant may be made by service upon the agent or agents engaged in conducting such business in the district in which suit is brought.

"Approved, March 3, 1897." 29 Stat. pp. 695, 696.

The Supreme Court recognizes that § 48 is an enactment limiting a previous broader venue for non-inhabitant defendants in patent cases in any district court in which service on him gave jurisdiction in personam: "Section 24(7) of the Judicial Code (28 U.S.C.A. § 41(7) is the source from which District Courts derive jurisdiction of cases arising under the patent laws. Under that clause and until the enactment of section 48 a suit for infringement might have been maintained in any district in which jurisdiction of defendant could be obtained. In re Hohorst, 150 U.S. 653, 661, 14 S.Ct. 221, 37 L.Ed. 1211. And see In re Keasbey & Mattison Co., 160 U. S. 221-230, 16 S.Ct. 273, 40 L.Ed. 402. Section 48 relates to venue. It confers upon defendants in patent cases a privilege in respect of the places in which suits may be maintained against them. And that privilege may be waived. Lee v. Chesapeake & Ohio Ry. Co., 260 U.S. 653, 43 S.Ct. 230, 67 L.Ed. 443; Gulf Smokeless Coal Co. v. Sutton, Steele & Steele 4 Cir. 35 F.(2d) 433, 438. * * *". General Elec. Co. v. Marvel Rare Metals Co., 287 U.S. 430, 434, 435, 53 S.Ct. 202, 204, 77 L.Ed. 408.

This character of § 48 as limiting broader power in the court is held in the cases of Bowers v. Atlantic G. & P. Co., C.C. S. D. N.Y., 104 F. 887, 892, and Cheatham Electric Switching Device Co. v. Transit Dev. Co., C.C. E.D. N.Y., 191 F. 727. Cf. Westinghouse Air-Brake Co. v. Great Northern R. Co., 2 Cir., 88 F. 258, 262. In each case there was a dismissal of the cause as to the non-inhabitant defendant, — in the Bowers Case because, though having a regular and established place of business, it had not infringed in the district in which the suit was brought; and in the Cheatham Case because the non-inhabitant company, though infringing in the district of the suit, had no regular and established place of business there.

The district court's opinion does not consider any of these cases but, in denying Dalmo's motion to dismiss, follows Zell v. Erie Bronze Co., D.C. E.D. Pa., 273 F. 833, 837, 838. That case held that prior to the enactment of § 48 in 1897, suits against patent infringers could be brought only in districts in which they reside and hence in its provisions for suits against those not residents of the district, but who had a regular and established place of business and infringed in that district, there is a broadening of a narrower jurisdiction to entertain the suit without the consent of the defendant. The court reasons that, since it is an extending instead of a narrowing statute, that court does not regard it as a limitation on the prior enacted provision of § 52² of the Code which, it holds, applies to all civil suits not local in nature, including those for patent infringement, and permits a suit...