342 U.S. 180 (1952), 180, Kerotest Manufacturing Co. v. C-O-Two Fire Equipment Co.

Docket Nº:No. 180
Citation:342 U.S. 180, 72 S.Ct. 219, 96 L.Ed. 200
Party Name:Kerotest Manufacturing Co. v. C-O-Two Fire Equipment Co.
Case Date:January 02, 1952
Court:United States Supreme Court

Page 180

342 U.S. 180 (1952)

72 S.Ct. 219, 96 L.Ed. 200

Kerotest Manufacturing Co.


C-O-Two Fire Equipment Co.

No. 180

United States Supreme Court

Jan. 2, 1952

Argued November 30, 1951




Under the Federal Declaratory Judgments Act, a Pennsylvania manufacturer, whose customer was already being sued in Illinois by a Delaware corporation for patent infringement, sued in a federal court in Delaware for a declaratory judgment that the patents were invalid and that devices which the manufacturer supplies to its customers did not infringe them. Subsequently, the manufacturer was joined as a defendant in the Illinois infringement suit. The District Court in Delaware denied a stay of the Delaware suit and enjoined the patentee from proceeding against the manufacturer in the Illinois suit. The Court of Appeals reversed on the ground that all interests would be best served by prosecution of the suit in Illinois.

Held: the judgment of the Court of Appeals is affirmed. Pp. 181-186.

(a) Ample discretion must be left to the lower courts for the wise judicial administration of the Federal Declaratory Judgments Act, which has created complicated problems for coordinate courts by facilitating the initiation of litigation by different parties to many-sided transactions. Pp. 183-184.

(b) It is not to be assumed that the lower courts will permit owners of weak patents to avoid real tests of their patents' validity by successive suits against customers in forums inconvenient to the manufacturers or selected because of greater hospitality to patents. Pp. 184-185.

(c) A 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. Pp. 185-186.

189 F.2d 31, affirmed.

A federal district court in Delaware temporarily stayed a declaratory judgment proceeding against respondent to test the validity of its patents and denied an injunction against respondent proceeding against petitioner in a

Page 181

pending infringement suit in Illinois against petitioner's customer. 85 U.S.P.Q. 185. The Court of Appeals affirmed. 182 F.2d 773. After petitioner had been joined as a defendant in the Illinois proceedings, the District Court in Delaware denied a stay of the declaratory judgment proceeding and enjoined respondent from proceeding against petitioner in the Illinois suit. 92 F.Supp. 943. The Court of Appeals reversed. 88 U.S.P.Q. 335. On rehearing, the Court of Appeals, sitting en banc, adhered to the reversal. 189 F.2d 31. This Court granted certiorari. 342 U.S. 810. Affirmed, p. 186.

FRANKFURTER, J., lead opinion

[72 S.Ct. 220] MR. JUSTICE FRANKFURTER delivered the opinion of the Court.

The C-O-Two Fire Equipment Company, the respondent here, owns two patents, one issued on November 23, 1948, and the other reissued on August 23, 1949, for squeeze-grip values and discharge heads for portable fire extinguishers. C-O-Two, incorporated in Delaware, has offices in Newark, New Jersey. On January 17, 1950, it commenced in the District Court for the Northern District of Illinois an action against the Acme Equipment Company for "making and causing to be made and selling and using" devices which were charged with infringing C-O-Two's patents.

On March 9, 1950, the petitioner Kerotest began in the...

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