SUNDSTRAND CORPORATION v. AMERICAN BRAKE SHOE COMPANY, 13919.

Decision Date16 April 1963
Docket NumberNo. 13919.,13919.
Citation315 F.2d 273
PartiesSUNDSTRAND CORPORATION, Plaintiff-Appellee, v. AMERICAN BRAKE SHOE COMPANY, Defendant-Appellant.
CourtU.S. Court of Appeals — Seventh Circuit

Richard R. Trexler, Chicago, Ill., Donald N. MacIntosh, Chicago, Ill., of counsel, for appellant.

William J. Stellman, Lloyd W. Mason, William R. McNair, Chicago, Ill., Hofgren, Brady, Wegner, Allen & Stellman, Chicago, Ill., of counsel, for appellee.

Before SCHNACKENBERG, CASTLE and SWYGERT, Circuit Judges.

SWYGERT, Circuit Judge.

The principal question is whether a patent owner who has sued a customer of an alleged infringing manufacturer may be required to involuntarily litigate his action against the customer in a subsequently filed declaratory judgment action initiated by the manufacturer against the patent owner by the court, sitting in another district, having jurisdiction of the later filed declaratory judgment action.

To show the facts as succinctly and understandably as possible a diagrammatic presentation may be more helpful than a recital.

                              Date Filed  District               Parties
                  Suit 1.  June 11, 1962  Colorado    American Brake Shoe
                                                      (A Delaware Corporation)
                                                                    v
                                                      Sundstrand Corporation
                                                      (an Illinois Corporation)
                                                      Claim of infringment by Sundstrand
                                                      of American Brake Shoe's
                                                      three patents, 2,502,546, 2,455,330
                                                      and Re 24,048
                  Suit 2.  June 12, 1962  Maryland    American Brake Shoe
                                                                    v
                                                      Warner-Fruehauf Trailer Company
                                                      Inc. and Duralite Manufacturing
                                                      Company, (both Maryland corporations
                                                      and customers of Sundstrand)
                                                      Claim of infringement
                                                      of American Brake Shoe's patents.
                  Suit 3.  July 3, 1962  Northern     Sundstrand
                                         District of                v.
                                         Illinois     American Brake Shoe.
                                                      Action for declaration that American
                                                      Brake Shoe's patents are invalid
                                                      and/or not infringed.
                

This was the posture of the three suits on July 25, 1962, when Sundstrand moved for an injunction restraining the further prosecution of the Maryland suit and enjoining the filing of any additional infringement suits against it or its customers. The District Court for the Northern District of Illinois granted a temporary restraining order contingent on the defendants in the Maryland action filing their voluntary appearance in the Illinois suit. In effect, the order placed in the hands of the defendant customers in the Maryland suit the power to transfer that suit to the Northern District of Illinois without the consent of the patentee-plaintiff or the Maryland District Court.

The United States Supreme Court in Kerotest Mfg. Co. v. C-O-Two Co., 342 U.S. 180, 72 S.Ct. 219, 96 L.Ed. 200 (1952), laid down guidelines for the lower courts in handling the complex multiple suit, multiple party, and forum non conveniens problems that arise in patent actions. While the Supreme Court therein established a broad area of discretion in the District Courts to enable them to properly regulate the course of complicated litigation in these areas, nowhere in the opinion can we find authority for the action of the Illinois District Court in the instant case.

In Kerotest the patent owner filed an action for infringement against a customer of the manufacturer alleged to be infringing. This action was started in Illinois. By amendment the manufacturer was added as a defendant, but prior to the amendment the manufacturer had instituted a Declaratory Judgments Act1 suit against the patentee in Delaware. The District Court in Delaware enjoined the patentee from proceeding in the Illinois suit against the manufacturer and refused to stay the Delaware action. The Court of Appeals for the Third Circuit reversed and the Supreme Court affirmed.

While the fact situations in Kerotest and the instant case are not exactly parallel, it is to be noted that in Kerotest, the final disposition permitted the first filed suit to proceed. Moreover, in each of the cases referred to by the Court in its footnote (fn. 3 at 184, 72 S.Ct. at 221) it was the prosecution of a subsequently filed suit that was sought to be enjoined or stayed.

As to the problem which faced the trial judge in the case at bar, we believe the Supreme Court's language in Kerotest is significant:

"The manufacturer who is charged with infringing a patent cannot stretch the Federal Declaratory Judgments Act to give him a paramount right to choose the forum for trying out questions of infringement and validity. He is given an equal start in the race to the courthouse, not a headstart. If he is forehanded subsequent suits against him by the patentee can within the trial court\'s discretion be enjoined pending determination of the declaratory judgment suit, and a judgment in his favor bars suits against his customers. If he is anticipated, the court\'s discretion is broad enough to protect him from harassment of his customers. If the patentee\'s suit against a customer is brought in a district where the manufacturer cannot be joined as a defendant, the manufacturer may be permitted simultaneously to prosecute a declaratory action against the patentee elsewhere. And if the manufacturer is joined as an unwilling defendant in a forum non conveniens, he has available upon an appropriate showing the relief provided by § 1404(a) of the Judiciary Code. 62 Stat. 869, 937, 28 U.S.C. § 1404(a)." (Emphasis supplied.)

The Supreme Court recognized the right of a litigant to initially choose his forum — even where this involves a "race to the courthouse." American Brake Shoe had a statutory right for which it sought vindication in the Maryland court. Its right was separate and independent from that against the alleged infringing manufacturer, and such right, sanctioned by statute, ought not be interfered with except for compelling reasons. 35 U.S.C. §§ 271, 281; Birdsell v. Shaliol, 112 U.S. 485, 488, 5 S.Ct. 244, 28 L.Ed. 768 (1884); Minnesota Mining & Mfg. Co. v. Polychrome Corp., 267 F.2d 772 (7th Cir. 1959).

The Supreme Court in Kerotest gave its approval to the normal procedural safeguards used to protect litigants from having to do battle in an improper forum. One of these safeguards is the application of the doctrine of forum non conveniens under the provision of section 1404(a)2 of the Judicial Code. Here, the District Court did not enjoin the suit between the patentee and the alleged infringing customer because of frivolousness or because it constituted harassment of Sundstrand's customers;...

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6 cases
  • Sweetheart Plastics, Inc. v. Illinois Tool Works, Inc.
    • United States
    • U.S. District Court — Southern District of New York
    • May 3, 1967
    ...claims. See Kerotest Mfg. Co. v. C-O Two Co., 342 U.S. 180, 186, 72 S.Ct. 219, 96 L.Ed. 200 (1952); Sundstrand Corp. v. American Brake Shoe Co., 315 F.2d 273 (7th Cir. 1963). 8 Cf. Caldwell-Clements, Inc. v. McGraw-Hill Pub. Co., 11 F.R.D. 156, 158 (S.D. N.Y.1951). 9 A plaintiff's choice of......
  • William Gluckin & Co. v. International Playtex Corp.
    • United States
    • U.S. Court of Appeals — Second Circuit
    • January 28, 1969
    ...p. 25), Playtex argues that it has the statutory right as a patentee to sue an infringing seller. See Sundstrand Corp. v. American Brake Shoe Co., 315 F.2d 273, 276 (7th Cir. 1963). Playtex asserts, therefore, that before the first-filed suit can be enjoined, there must be a finding of hara......
  • In re Vencor, Inc.
    • United States
    • U.S. Bankruptcy Court — District of Delaware
    • September 19, 2002
    ...and 1406 do not permit one court to transfer venue of a case to itself from another court. See, e.g., Sundstrand Corp. v. American Brake Shoe Co., 315 F.2d 273, 276 (7th Cir.1963); National Equipment Rental, Ltd. v. Fowler, 287 F.2d 43, 46-47 (2d Cir.1961). If the Movants wanted the Kentuck......
  • Bay Tek Entm't, Inc. v. Wedges & Ledges of Cal., Inc.
    • United States
    • U.S. District Court — Eastern District of Wisconsin
    • August 22, 2019
    ...court's case to this court would be denied since this court has no authority to order such a transfer. Sundstrand Corp. v. Am. Brake Shoe Co., 315 F.2d 273, 276 (7th Cir. 1963) (holding that an order by the Northern District of Illinois purporting to transfer a case pending in the District ......
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