484 F.2d 634 (9th Cir. 1973), 71-1935, International Video Corp. v. Ampex Corp.

Docket Nº:71-1935.
Citation:484 F.2d 634, 179 U.S.P.Q. 260
Party Name:INTERNATIONAL VIDEO CORPORATION, Plaintiff-Appellee, v. AMPEX CORPORATION, Defendant-Appellant.
Case Date:September 04, 1973
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit

Page 634

484 F.2d 634 (9th Cir. 1973)

179 U.S.P.Q. 260



AMPEX CORPORATION, Defendant-Appellant.

No. 71-1935.

United States Court of Appeals, Ninth Circuit.

Sept. 4, 1973

Francis A. Even (argued), John F. Flannery, of Fitch, Even, Tabin & Luedeka, Chicago, Ill., J. Bruce McCubbrey, San Francisco, Cal., for defendant-appellant.

Karl A. Limbach (argued), Richard E. Peterson, Thomas A. Gallagher, of Limbach, Limbach & Sutton, San Francisco, Cal., for plaintiff-appellee.

Page 635

Before CHAMBERS and TRASK, Circuit Judges, and TAYLOR, [*] District Judge.

TRASK, Circuit Judge:

This is an appeal from an order dismissing both a complaint for declaratory judgment and a counterclaim for patent infringement on the basis that there was no actual or justiciable controversy between the parties. Appellant, Ampex Corporation (Ampex), claims the court had no authority to dismiss its counterclaim over its objection and challenges the court's discretion in refusing to award attorneys' fees. We affirm.

International Video Corporation (International), the plaintiff-appellee, originally sought a declaratory judgment that it was not infringing an Ampex patent covering video tape recording apparatus. Ampex unsuccessfully sought dismissal of the action asserting by way of Motion to Dismiss, that there was no justiciable controversy. Thereafter, Ampex "reluctantly" filed a compulsory counterclaim to prevent waiver of its right to sue International for patent infringement. Fed.R.Civ.P. 13(a). The counterclaim alleged:

"Without hereby waiving its denial of the existence heretofore of a justiciable controversy between the Plaintiff, International Video Corporation, and the Defendant, Ampex Corporation, with respect to the Defendant's Patent 2,956,114, or to infringement thereof by the Plaintiff; and without waiving its right of review of the District Court's denial of the Defendant's motion to dismiss the declaratory judgment complaint herein for want of justiciable controversy; and to prevent possible loss of right for failure to assert what may be held to be a compulsory counterclaim, the Defendant counterclaims against the Plaintiff, IVC, . . ." C.T. at 71.

A year later, International having changed its position completely, filed a Motion to Reopen Defendant's Motion to Dismiss, arguing that the factual context of the action had changed and that the action should be dismissed as Ampex had previously suggested. The court granted International's motion explaining:

"In effect, plaintiff argues that the circumstances giving rise to this action have so changed that it would serve no useful purpose to proceed further. In light of plaintiff's presentation, this argument is persuasive. Although the parties may still be in some disagreement over the patent in question, the changes in circumstances referred to by plaintiff demonstrate that 'there are no longer adverse parties with sufficient legal interests to maintain the litigation.' 6A Moore's Federal Practice ¶ 57.13, at 3074 (2d ed. 1966). See Cover v....

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