200 F.2d 876 (2nd Cir. 1952), 70, Technical Tape Corp. v. Minnesota Min. & Mfg. Co.

Docket Nº:70, 22462.
Citation:200 F.2d 876, 95 U.S.P.Q. 406
Case Date:December 18, 1952
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

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200 F.2d 876 (2nd Cir. 1952)

95 U.S.P.Q. 406




Nos. 70, 22462.

United States Court of Appeals, Second Circuit.

December 18, 1952

Argued Nov. 13, 1952.

Joseph Hirschman, New York City, Curtis, Morris & Safford, New York City, Daniel L. Morris, New York City, of counsel, for plaintiff-appellant.

Newton A. Burgess, (of Burgess, Ryan & Hicks), New York City, Harold J. Kinney, St. Paul, Minn., M. K. Hobbs, Platteville, Wis., and H. H. Hamilton, New York City, of counsel, for defendant-appellee.

Before AUGUSTUS N. HAND, CHASE and CLARK, Circuit Judges.

AUGUSTUS N. HAND, Circuit Judge.

This is an action brought on November 17, 1951, under the Declaratory Judgment Act, 28 U.S.C. § 2201, to have the defendant's patent declared invalid, or, if valid,

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then not infringed. The court below dismissed the complaint, holding that no justiciable controversy was stated upon which a claim for relief could be founded, and further indicated that dismissal was also required since one of the two grounds for jurisdiction, which were alleged disjunctively, was insufficient. We think that neither ground for dismissal was correct, and that the motion by the plaintiff for leave to file an amended complaint should have been granted.

The patent involved in this suit relates to pressure sensitive adhesive tapes having a non-fibrous, film backing and a surface layer of pressure sensitive adhesive. The defendant markets such tape under the brand name of 'Scotch' tape.

From the affidavits submitted to the district court it appears that about two years prior to the institution of this action an application by the plaintiff, Technical Tape Corporation, for a license from the defendant, Minnesota Mining & Manufacturing Company, was denied with a warning that if Technical Tape Corporation made the tape as it contemplated it would face a highly expensive lawsuit. On October 25, 1951 the defendant's executive vice-president called at the plaintiff's office and was handed a roll of tape. The plaintiff's affidavits contend that the defendant's officer asserted it to be an infringement and that the plaintiff would be given the 'toughest fight it ever saw' on such tape. There is some dispute as to whether the plaintiff had manufactured tape prior to this interview. But a pilot run in May 1951 at its laboratory had yielded a commercially satisfactory tape, and the tape exhibited at the meeting had been imported from a Canadian affiliate. It does not seem to be disputed that the manufacture of small quantities had begun prior to the commencement of this action. The plaintiff further asserted in its affidavits that its sales had met with resistance because of its prospective customers' fear of action by the defendant, and that it had been forced to give many distributors a written promise that it would undertake the defense of any action for infringement against them. The defendant's successful prosecution of suits against other infringers of its patent was also established. The decisions, sustaining the patent, were affirmed by the United States Court of Appeals for the Seventh Circuit. Minnesota Mining & Mfg. Co. v. International Plastic Corp., 159 F.2d 554.

Following the dismissal of the complaint by Judge Clancy, the plaintiff moved for reargument and for leave to file an amendment to the complaint. Further affidavits, citing specific instances of guarantees by the plaintiff to its customers necessitated by the defendant's actions were submitted at this time. However, all of such instances occurred subsequent to the date of the filing of the original complaint. The district court denied leave to file the amendment on the ground that the plaintiff was attempting to assert a supplemental pleading, and it could not do this where the original complaint was defective, as Judge Clancy had held it to be. Bonner v. Elizabeth Arden, Inc., 2 Cir., 177 F.2d 703. In September 1952 after it had secured the dismissal of the complaint in the present action, Minnesota Mining & Manufacturing Co. brought suit in Chicago against Technical Tape and one of its distributors for infringement of the identical patent, and also commenced a suit in Kansas City against a company handling plaintiff's tape.

Even assuming that one of the disjunctive allegations 1 of jurisdiction was insufficient while the other was not, Rule 8(e)2 of the Federal Rules, 28 U.S.C.A., contemplates such alternative allegations, and provides that no dismissal is to be granted if one of them is sufficient. See 2 Moore's Federal Practice (2d edition), 1706. Keene Lumber Co. v. Leventhal, 1 Cir., 165 F.2d 815, relied on by the district court is not to the contrary, for in that

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case there was no jurisdiction under either of the alternative grounds that were alleged. Further, if the pleading was defective the requested amendment 2 should have been...

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