458 F.2d 885 (7th Cir. 1972), 18961, Scam Instrument Corp. v. Control Data Corp.

Docket Nº18961.
Citation458 F.2d 885, 173 U.S.P.Q. 455
Party NameThe SCAM INSTRUMENT CORPORATION, Plaintiff-Appellant, v. CONTROL DATA CORPORATION, Defendant-Appellee.
Case DateApril 07, 1972
CourtUnited States Courts of Appeals, Court of Appeals for the Seventh Circuit

Page 885

458 F.2d 885 (7th Cir. 1972)

173 U.S.P.Q. 455

The SCAM INSTRUMENT CORPORATION, Plaintiff-Appellant,

v.

CONTROL DATA CORPORATION, Defendant-Appellee.

No. 18961.

United States Court of Appeals, Seventh Circuit.

April 7, 1972

Walther E. Wyss, M. Hudson Rathburn, Willis J. Jensen, Clemens Hufmann, Chicago, Ill., for plaintiff-appellant.

Allen Kirkpatrick, Kevin E. Joyce, Washington, D. C., Patrick H. Hume, Jack C. Berenzweig, James M. Wetzel, Hume, Clement, Hume & Lee, Ltd., Chicago, Ill., for defendant-appellee Control Data Corporation; Cushman, Darby & Cushman, Washington, D. C., Joseph A. Genovese, Washington, D. C., of counsel.

Page 886

Before DUFFY, Senior Circuit Judge, and KERNER [*] and PELL, Circuit Judges.

PELL, Circuit Judge.

Plaintiff, The Scam Instrument Corporation (Scam), an Illinois corporation, filed its complaint on August 19, 1969, in the District Court for the Northern District of Illinois, seeking damages and injunctive relief against defendant, Control Data Corporation (Control Data), a Delaware corporation, whose principal place of business was in Minnesota, for alleged infringement of three United States patents owned by plaintiff. The accused devices are process control computers allegedly sold by Control Data throughout the United States.

For approximately one year after the filing of the complaint, the parties devoted themselves to discovery and scrimmaging with regard thereto. In the intervening year, Control Data filed its motion to dismiss or transfer for lack of proper venue, relying on 28 U.S.C. § 1400(b), which reads as follows:

"(b) Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business."

Pointing out that the defendant, a Delaware corporation, had no residence in the Northern District of Illinois, Control Data contended that it was incumbent upon Scam to show both that actual infringement had been committed in said district and that the defendant had a regular and established place of business therein. While denying the established place of business in the Northern District of Illinois, Control Data particularly urged that the discovery to date had reflected no acts of actionable infringement in the district during the limitation period. 1 Relying on 28 U.S.C. § 1406(a), 2 Control Data took the position that if its motion to dismiss for want of proper venue was not granted, the district court in the alternative should transfer the action to the appropriate district court in Minnesota. Further discovery procedures, devoted primarily to meeting the issue raised by Control Data's motion, fostered the defense contention that if there was any infringement in the Northern District of Illinois it was in sales to Argonne National Laboratories, which were sales or leases to a United States governmental instrumentality. Control Data here argued in reliance upon the first paragraph of 28 U.S.C. § 1498 3 that the infringement, if any, being cognizable only in the Court of Claims, did not show infringement within the Northern District of Illinois as required by 28 U.S.C. § 1400(b).

At a hearing arising out of a motion pertaining to discovery, on September 30, 1970, the district court orally observed that it did not see much dispute that Argonne was really a part of the Government and in effect suggested a motion for partial summary judgment if there were no other than governmental purchases in the district.

Obviously acting upon the suggestion of the district court, Control Data on October 8, 1970, filed its "motions for partial summary judgment and for transfer" in which it moved for partial summary judgment pursuant to Rule

Page 887

56(b) of the Federal Rules of Civil Procedure dismissing the complaint from the court, and additionally renewed its prior motion that the case be transferred to the United States District Court for the District of Minnesota. There is no indication in the record before us that there were in fact any alleged infringing activities other than that at Argonne, although in both the court below and on this appeal, Scam contends that the defense assertion of governmental purchases with respect to the computers at Argonne was factually unfounded. This contention was primarily based upon the form and claimed lack of correct factual basis in the supportive affidavits filed by Control Data.

In its reply brief in the district court to plaintiff's opposition to summary judgment and transfer, Control Data advised the court that on October 19, 1970, it had commenced a declaratory judgment action in the district court in Minnesota seeking a declaration that the patents in the present suit were invalid and not infringed.

On October 28, 1970, Scam filed a notice of dismissal, the body of which in its entirety reads as follows:

"Now comes Plaintiff The Scam Instrument Corporation and gives notice of voluntary dismissal of this action without prejudice under the provisions of Rule 41(a) (1) (i) of the Federal Rules of Civil Procedure."

The district court by bench notation acknowledged the filing of the notice of dismissal.

Control Data, on the next day, filed a motion to reinstate the cause of action asserting that the notice of dismissal was ineffective on its face because a dismissal under Rule 41(a) (1) (i) is...

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41 practice notes
  • 6 F.Supp.2d 938 (N.D.Ill. 1998), 97 C 3366, Madsen v. Park City
    • United States
    • Federal Cases United States District Courts 7th Circuit Northern District of Illinois
    • 29 Abril 1998
    ...do this; leave of court is not required and the court may not limit or condition this right. Scam Instrument Corp. v. Control Data Corp., 458 F.2d 885, 888-89 (7th Cir.1972); Pedrina v. Chun, 987 F.2d 608, 610 (9th Cir.1993); Hare v. Abbott Laboratories, 1997 WL 223056 *1 (N.D.Ill. April 29......
  • 297 F.R.D. 637 (N.D.Ala. 2014), C. A. CV-13-S-310-NE, Rismed Oncology Sys., Inc. v. Baron
    • United States
    • Federal Cases United States District Courts 11th Circuit Northern District of Alabama
    • 7 Marzo 2014
    ...of. . . [an] order of the court " ) (ellipses and alteration supplied). See also, e.g., Scam Instrument Corp. v. Control Data Corp., 458 F.2d 885, 888 (7th Cir. 1972) (holding that the filing of a notice of dismissal " automatically terminated the action upon the filing of the dis......
  • 435 F.Supp.2d 853 (S.D.Ill. 2006), Civ. 06-003, Donaldson v. Pharmacia Pension Plan
    • United States
    • Federal Cases United States District Courts 7th Circuit Southern District of Illinois
    • 14 Junio 2006
    ...from this action by notice of Plaintiffs on March 14, 2006. See FED. R. CIV. P. 41(a)(1)(i); Scam Instrument Corp. v. Control Data Corp., 458 F.2d 885, 888-89 (7th Cir.1972). [2] The Plan document was submitted to the Court in support of Defendants' motion to dismiss. In ruling on a Rule 12......
  • 813 F.2d 1532 (9th Cir. 1987), 85-6511, Hamilton v. Shearson-Lehman American Exp., Inc.
    • United States
    • Federal Cases United States Courts of Appeals Court of Appeals for the Ninth Circuit
    • 7 Abril 1987
    ...506 F.2d 914 (5th Cir.), cert. denied, 422 U.S. 1048, 95 S.Ct. 2665, 45 L.Ed.2d 700 (1975); Scam Instrument Corp. v. Control Data Corp., 458 F.2d 885 (7th Cir.1972). [4] See Universidad Central del Caribe, Inc. v. Liaison Committee on Medical Education, 760 F.2d 14 (1st Cir.1985) (motion fo......
  • Request a trial to view additional results
41 cases
  • 6 F.Supp.2d 938 (N.D.Ill. 1998), 97 C 3366, Madsen v. Park City
    • United States
    • Federal Cases United States District Courts 7th Circuit Northern District of Illinois
    • 29 Abril 1998
    ...do this; leave of court is not required and the court may not limit or condition this right. Scam Instrument Corp. v. Control Data Corp., 458 F.2d 885, 888-89 (7th Cir.1972); Pedrina v. Chun, 987 F.2d 608, 610 (9th Cir.1993); Hare v. Abbott Laboratories, 1997 WL 223056 *1 (N.D.Ill. April 29......
  • 297 F.R.D. 637 (N.D.Ala. 2014), C. A. CV-13-S-310-NE, Rismed Oncology Sys., Inc. v. Baron
    • United States
    • Federal Cases United States District Courts 11th Circuit Northern District of Alabama
    • 7 Marzo 2014
    ...of. . . [an] order of the court " ) (ellipses and alteration supplied). See also, e.g., Scam Instrument Corp. v. Control Data Corp., 458 F.2d 885, 888 (7th Cir. 1972) (holding that the filing of a notice of dismissal " automatically terminated the action upon the filing of the dis......
  • 435 F.Supp.2d 853 (S.D.Ill. 2006), Civ. 06-003, Donaldson v. Pharmacia Pension Plan
    • United States
    • Federal Cases United States District Courts 7th Circuit Southern District of Illinois
    • 14 Junio 2006
    ...from this action by notice of Plaintiffs on March 14, 2006. See FED. R. CIV. P. 41(a)(1)(i); Scam Instrument Corp. v. Control Data Corp., 458 F.2d 885, 888-89 (7th Cir.1972). [2] The Plan document was submitted to the Court in support of Defendants' motion to dismiss. In ruling on a Rule 12......
  • 813 F.2d 1532 (9th Cir. 1987), 85-6511, Hamilton v. Shearson-Lehman American Exp., Inc.
    • United States
    • Federal Cases United States Courts of Appeals Court of Appeals for the Ninth Circuit
    • 7 Abril 1987
    ...506 F.2d 914 (5th Cir.), cert. denied, 422 U.S. 1048, 95 S.Ct. 2665, 45 L.Ed.2d 700 (1975); Scam Instrument Corp. v. Control Data Corp., 458 F.2d 885 (7th Cir.1972). [4] See Universidad Central del Caribe, Inc. v. Liaison Committee on Medical Education, 760 F.2d 14 (1st Cir.1985) (motion fo......
  • Request a trial to view additional results