287 U.S. 430 (1932), 57, General Electric Co. v. Marvel Rare Metals Co.

Docket NºNo. 57
Citation287 U.S. 430, 53 S.Ct. 202, 77 L.Ed. 408
Party NameGeneral Electric Co. v. Marvel Rare Metals Co.
Case DateDecember 12, 1932
CourtUnited States Supreme Court

Page 430

287 U.S. 430 (1932)

53 S.Ct. 202, 77 L.Ed. 408

General Electric Co.


Marvel Rare Metals Co.

No. 57

United States Supreme Court

Dec. 12, 1932

Argued November 17, 1932




1. In a suit in the district court for infringement of patents, an order granting a motion to dismiss, for want of jurisdiction, a counterclaim alleging infringement by plaintiffs of a patent of the defendants and praying for an injunction and an accounting held an interlocutory order refusing an injunction, and appealable to the Circuit Court of Appeals under Judicial Code, § 129; U.S.C. Tit. 28, § 227. P. 432.

2. Section 48 of the Judicial Code (U.S.C. Tit. 28, § 227) relates to venue, and the privilege conferred by it upon defendants in patent cases, in respect of the places in which suits may be maintained against them, may be waived. P. 434.

3. In a suit in the district court for infringement of patents, a counterclaim alleging infringement by plaintiffs of a patent of the defendants and praying for an injunction and accounting may be maintained against the plaintiffs (Equity Rule 30) though it does not contain allegations showing that plaintiffs are inhabitants of, or committed acts of infringement and have a regular place of business within, the district in which they commenced their suit. Section 48 of the Judicial Code (U.S.C. Tit. 28, § 227) does not prevent. P. 435.

56 F.2d 823 affirmed.

Certiorari, 286 U.S. 541, to review a judgment which, upon appeal from an order dismissing a counterclaim in a suit brought by the petitioners for patent infringement, denied a motion to dismiss the appeal and reversed the order.

Page 431

BUTLER, J., lead opinion

MR. JUSTICE BUTLER delivered the opinion of the Court.

Petitioners, New York corporations having their principal offices in that state, brought this suit in the northern district of Ohio against defendants, two corporations having regular and established places of business in that district and two individuals residing there. The complaint alleges that the defendants infringed plaintiffs' rights under certain patents relating to the manufacture of hard-metal products by making, using, and selling tools and parts thereof embodying such inventions. The answer avers that the patents are invalid and denies infringement, alleging that all manufacture by defendants has been under one or more of five patents granted defendant Gebauer. And the answer sets up a counterclaim against plaintiffs for the infringement of one of these patents and prays injunction against such infringement and an accounting. But it does not allege that plaintiffs are inhabitants of the district, or that they infringed defendants' patent and have a regular and established place of business there. The plaintiffs moved to dismiss the counterclaim for want of jurisdiction. The District Court granted their motion. Defendants appealed. Plaintiffs moved to dismiss the appeal on the ground that the dismissal of the counterclaim does not amount to the refusal of an injunction under § 129, Judicial Code, and was not appealable under that section. The Circuit Court of Appeals denied the motion and reversed the order appealed from. 56 F.2d 823.

Plaintiffs insist that the court erred in refusing to dismiss the appeal. Equity Rule 30 declares:

The defendant by his answer shall set out . . . his defense to each claim asserted in the bill. . . . The answer must state in short and simple form any counterclaim arising out of the transaction which is the subject matter of the suit, and

Page 432

may, without cross-bill, set up any set-off or counterclaim against the plaintiff which might be the subject of an independent suit in equity against him, and such set-off or counterclaim so set up shall have the same effect as a cross-suit, so as to enable the court to pronounce a final decree in the same suit on both the original and the cross-claims.

268 U.S. 709. It is clear that in this suit the court in a single decree may finally determine the merits of the cause of action alleged in the complaint and the counterclaim set up in the answer. The order dismissing the counterclaim is interlocutory. Winters v. Ethell, 132 U.S. 207, 210; Ex Parte Railroad Co., 95 U.S. 221, 225; Ayres v. Carver, 17 How. 591, 595. The general rule is that review of interlocutory orders must await appeal from the final decree. But, in proceedings for injunctions and receivers, exceptions have been made by § 129, Judicial Code:

Where, upon a hearing in a district court, or by a judge thereof in...

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