TRIANGLE C. & C. CO. v. National Electric Products Corp.

• Decision Date: 01 September 1943
• Docket Number: No. 8263.,8263.
• Citation: 138 F.2d 46
• Parties: TRIANGLE CONDUIT & CABLE CO., Inc., v. NATIONAL ELECTRIC PRODUCTS CORPORATION.
• Court: U.S. Court of Appeals — Third Circuit

138 F.2d 46 (1943)

TRIANGLE CONDUIT & CABLE CO., Inc., v. NATIONAL ELECTRIC PRODUCTS CORPORATION.

No. 8263.

Circuit Court of Appeals, Third Circuit.

Argued May 5, 1943.

Decided September 1, 1943.

John Hoxie, of New York City (Marvel & Morford, of Wilmington, Del., and Pennie, Davis, Marvin & Edmonds, and W. Peters Blanc, all of New York City, on the brief), for appellant.

Samuel E. Darby, Jr. of New York City (E. Ennalls Berl, of Wilmington, Del., and Louis D. Fletcher and Floyd H. Crews, both of New York City, on the brief), for appellee.

Before MARIS, JONES, and GOODRICH, Circuit Judges.

MARIS, Circuit Judge.

This is an appeal from an order of the District Court for the District of Delaware enjoining National Electric Products Corporation from proceeding with its cause of action in the District Court for the Eastern District of Michigan against Sears, Roebuck & Company, Inc. The better to understand the present controversy it will be helpful to recapitulate some of the facts which gave rise to our prior decision in the case, 3 Cir., 1942, 125 F.2d 1008, as well as to recount the events which have occurred subsequent thereto.

Triangle commenced an action in the District Court for the District of Delaware seeking a declaratory judgment of invalidity with respect to eleven patents owned by National which National claimed had been infringed by Triangle. While this action was pending National filed a patent infringement suit in the District Court for the Eastern District of Michigan charging Triangle with having infringed ten of the National patents by manufacture, sale and use and charging Sears, Roebuck & Company, Inc. with having infringed by reselling articles manufactured in violation of six of the National patents. All of the enumerated patents were already involved in the declaratory judgment suit. The Delaware district court denied Triangle's petition for an order restraining National from prosecuting the patent infringement suit so as to await an adjudication in the declaratory judgment suit. Upon appeal this court reversed and held that it was the duty of the Delaware Court to enjoin National from proceeding with the cause of action stated in the Michigan suit against Triangle until after the declaratory judgment action had been decided. Triangle Conduit & Cable Co., Inc., v. National Elec. P. Corp., 3 Cir. 1942, 125 F.2d 1008, certiorari denied 316 U.S. 676, 62 S.Ct. 1046, 86 L.Ed. 1750. Thereafter the district court of Michigan entered a consent decree staying all further proceedings of the cause in so far as concerned the action against Triangle. In the same consent order the Michigan district court severed the cause of action against Sears. A stipulation was entered into between National and Sears which recited: "That at the trial of this action against Sears Roebuck & Co., Inc., plaintiff will confine its evidence of infringement to rubber covered wire (whether sold as such or as an element of a cable), flexible armored cable and non-metallic sheathed cable of the types made by Triangle Conduit & Cable Co., Inc., and sold by it to, and resold by, Sears, Roebuck & Co., Inc.; without prejudice however to plaintiff's right of relief herein, under the principles of law governing the scope and effect of a decree of infringement, with respect to any other products sold by Sears, Roebuck & Co. Inc., whether made by Triangle Conduit & Cable Co., Inc., or by another manufacturer or other manufacturers." Triangle thereupon moved in the district court of Delaware to enjoin the prosecution of National's severed suit against Sears on the ground that if the adjudication in the Delaware declaratory judgment suit is favorable to Triangle that adjudication will be entirely dispositive of the Michigan suit. The injunction was granted by the district court of Delaware because it construed the language of our opinion in Triangle Conduit & Cable Co., Inc., v. National Elec. P. Corp., supra, as requiring such a result.

The question before us in that case was whether under the circumstances there disclosed the United States district court which first obtained jurisdiction of the parties and issues should enjoin the further prosecution of proceedings involving the same parties and issues begun thereafter in another United States district court. We held that it should, under the rule which we had previously enunciated in Crosley Corporation v. Hazeltine Corporation, 122 F.2d 925, certiorari denied, 1941, 315 U.S. 813, 62 S.Ct. 798, 86 L.Ed. 1224. It was argued that the rule of the Crosley case was inapplicable because the controversy in the Michigan district court was not restricted to the patent owner and the manufacturer as infringer but also involved one of the customers of the manufacturer who resold the alleged...