Girdler Corporation v. EI du Pont de Nemours & Co.

• Decision Date: 05 September 1944
• Docket Number: Civil Action No. 414.
• Citation: 56 F. Supp. 871
• Parties: GIRDLER CORPORATION v. E. I. DU PONT DE NEMOURS & CO.
• Court: U.S. District Court — District of Delaware

56 F. Supp. 871

GIRDLER CORPORATION v. E. I. DU PONT DE NEMOURS & CO.

Civil Action No. 414.

District Court, D. Delaware.

September 5, 1944.

Charles H. Walker (of Fish, Richardson & Neave) and Clair W. Fairbank (of Dean, Fairbank & Hirsch), both of New York City, Virgil E. Woodcock, of Philadelphia, Pa., and James R. Morford (of Marvel & Morford), of Wilmington, Del., for plaintiff.

Chester H. Biesterfeld, Albert T. St. Clair, and Alexander L. Nichols (of Morris, Steel & Nichols), all of Wilmington, Del., for defendant.

LEAHY, District Judge.

Action for a declaratory judgment under 28 U.S.C.A. § 400 of invalidity of defendant's Pitman Reissue Patent No. 22,301. The patent relates to the use of high-frequency electric heating apparatus in the manufacture of adhesive bonded products. Defendant moves to dismiss the complaint for the reason that there is no actual controversy between the parties.¹ If controversy exists, it must be either between defendant and plaintiff or defendant and plaintiff's customers.

1. Controversy between defendant and plaintiff. On July 7, 1943, defendant duPont, requesting plaintiff Girdler to take a license under the reissue patent, wrote: "Obviously, in view of your Company's activities in offering for sale electrostatic heating equipment of the type which would be an infringement of the reissue patent, you will wish to get this matter settled just as promptly as we do." In that letter duPont also stated that: "If the Girdler Corporation is not prepared to take a license, we will construe this letter as a formal notice of infringement of the reissue patent." Several months later, duPont sent a further communication which, in part, stated:

"We assume you and any other manufacturer of induction heating equipment which must necessarily employ the process claimed in Reissue 22,301 will wish to avoid contributory infringement by limiting your sales of such equipment to our licensees.

"We would appreciate your giving us a list of the names and addresses of the parties to whom you have sold induction heating equipment, whose operation would involve an infringement of this patent, in order that we may offer to license them." and "We would appreciate any comments you may care to make either on our proposed form of license or our proposed licensing policy, including a statement as to whether or not we may have your assurance that the Girdler Corporation will not be a contributory infringer of Reissue No. 22,301 by offering for sale or selling to non-licensees induction heating equipment whose necessary operation would involve practicing the process of Reissue 22,301."

Plaintiff, as manufacturer of apparatus to be used in practicing the process covered by the claims of the reissue patent, was manifestly charged with contributory and not direct infringement. It would at first appear defendant's communications show a sufficient controversy exists between duPont and Girdler to support declaratory relief jurisdiction, for duPont, at least, has taken a definite position on the claims of its reissue patent insofar as Girdler's manufacture is involved. However, in the light of events occurring after the institution of suit in the case at bar, defendant argues what may have been appropriate jurisdiction in the first instance now no longer exists. Subsequent to suit defendant withdrew its charges of contributory infringement against plaintiff by stating: "* * * defendant withdraws its allegation of contributory infringement against plaintiff, without prejudice to its right to proceed against any direct infringers if and when such parties are practicing the teaching of Pitman Reissue No. 22,301, other than in the manufacture of products directly or indirectly for the Government of the United States during the period of the present war and for three months thereafter."² In addition, defendant offered to enter into a stipulation which plaintiff might utilize in the future as a plea in bar in the event duPont brought any subsequent suit against Girdler under the reissue patent for past acts of contributory infringement.

Defendant's main reliance is on Mercoid Corporation v. Mid-Continent Investment Co., 320 U.S. 661, 64 S.Ct. 268, which was decided after defendant sent its notice of infringement to plaintiff; and argues that if defendant should sue plaintiff as a contributory infringer, this court under the Mercoid case would be compelled to hold that such an action was an attempt to expand the scope of the claims of the reissue patent to cover an unpatented device.³ Defendant asserts that in view of the Mercoid case the doctrine of contributory infringement has been eliminated from our patent law and that this decision changed the circumstances from those that existed when duPont wrote its infringement notice in its letter of September 8, 1943, to plaintiff.⁴ From this, defendant concludes that its inability to sue plaintiff as a contributory infringer, plus its former offer withdrawing all charges, plus its proffer of a writing which would form the basis of a plea in bar in connection with future litigation between the parties, proves there can be no controversy between defendant and plaintiff under the Act. But, I am not convinced that the Mercoid decision abolishes all contributory infringement liability. While the five opinions in that case express the particular views of the Justices on the broad question of contributory infringement, the precise holding of Mercoid is that contributory infringement liability may not be asserted by the patentee where he, himself, comes into court with unclean hands and where he has attempted to misuse his patent grant. The uncontradicted facts before me fail to disclose that duPont is guilty of any such misconduct in the utilization of its reissue patent; and I am not prepared to hold, at this time, that it can never maintain an action for contributory infringement against plaintiff, especially where plaintiff is apparently manufacturing and selling a device which it knows can only be used by the purchasers in connection with the process covered by defendant's patent. Further clarification of the Mercoid case will not result, I believe, in a definitive holding that he who was once known as a contributory infringer now enjoys complete immunity from suit under all circumstances.

2. Controversy between defendant and plaintiff's customers. If my reading of the Mercoid case is inaccurate and plaintiff here will never be subject to suit as a contributory infringer by defendant, this newly created right of freedom from suit is a right in vacuo if defendant is free to make charges of direct infringement against both persons who have purchased equipment from plaintiff and against plaintiff's prospective customers, with resultant loss to plaintiff's business. In Alfred Hofmann, Inc., v. Knitting Machines Corp. et al., 3 Cir., 123 F.2d 458, 461, it was said: "We are of the opinion that the allegation and proof by a vendor that it is engaged in a course of conduct, the sale of machinery, which has brought and must bring purchasers from it into conflict with the owner of the patent, is sufficient to support a suit for a declaratory judgment by the vendor."

Now, in the instant case, in addition to communications sent by defendant to plaintiff, duPont also sent various letters to persons who had purchased equipment from plaintiff. One such letter is typical. On February 25, 1944, in writing to Girdler's vendee, Formica Insulation Company, duPont said:

"We note that you are using a `Thermex' electrostatic machine in the lamination of `Pregwood' boards.

"We are owners of Pitman Reissue Patent No. 22,301, a copy of which is enclosed. This is being sent to you because we believe you will find from a study of our patent that it covers the process which you are using in the utilization of induction heating to laminate organic materials. We feel you will not want to be in the position of infringing this patent.

"We should also like you to know that we are prepared to grant licenses under our patent.

"After your study of the patent, will you please acknowledge this letter and advise us whether you want to receive a copy of our tentative license form?"

A similar letter was sent to another of Girdler's vendees, the M and M Wood Working Company of Portland, Oregon. As all of Girdler's vendees are presently engaged in the manufacture of war goods for the government, under 35 U.S.C.A. § 68, they are temporarily secure from infringement actions by defendant as owner of the reissue patent. And the M and M Wood Working Company has considered the purchase of additional equipment from Girdler; but in view of duPont's claims against general commercial use of such equipment after the war without payment of royalty to duPont, M and M is fearful of making such additional purchases because it is impossible to predict when hostilities will cease. In this connection, M and M wrote to Girdler on May 18, 1944, and said:

"While we understand that we could work on straight Government priority plywood orders on new high-frequency equipment without paying royalties to DuPont for the duration of the war no one can predict the time when war hostilities will cease, and certainly we could not entertain the idea of purchasing additional equipment facing royalty payments after the war as presently set...