E. Edelmann & Co. v. Triple-A Specialty Co.

Citation88 F.2d 852
Decision Date17 February 1937
Docket NumberNo. 5978.,5978.
PartiesE. EDELMANN & CO. v. TRIPLE-A SPECIALTY CO.
CourtUnited States Courts of Appeals. United States Court of Appeals (7th Circuit)

Otto Raymond Barnett, Percival H. Truman, and Lawrence T. Barnett, all of Chicago, Ill., for appellant.

George A. Chritton and Russell Wiles, both of Chicago, Ill. (Dyrenforth, Lee, Chritton & Wiles, of Chicago, Ill., of counsel), for appellee.

Before EVANS, Circuit Judge, and LINDLEY and BRIGGLE, District Judges.

LINDLEY, District Judge.

Appellee brought suit in the District Court to secure a declaratory judgment, averring that appellant had wrongfully charged appellee with infringement of appellant's patent for a hydrometer to Edelmann No. 1,800,139 and had notified the trade of such untrue charges, and asking the court, first, to decide whether the patent is valid and, if so, whether it is infringed by appellee; and, second, to enjoin appellant from publication of such charges. The court found that it had jurisdiction of the parties and subject-matter, despite lack of diversity of citizenship. It did not pass upon the validity of the patent but declared appellee's device noninfringing and awarded an accounting for such damages, if any, as had accrued because of circulation of wrongful charges of infringement.

Appellant's first contention is that the court was without jurisdiction, because, there being no diversity of citizenship, no federal question was involved; that the suit is not one arising under the patent laws but under general jurisdiction in equity; and that the Declaratory Judgment Act is ineffective to confer jurisdiction.

The act (Jud.Code § 274d, 28 U.S.C.A. § 400) provides in part that: "In cases of actual controversy * * * the courts of the United States shall have power upon petition, declaration, complaint, or other appropriate pleadings to declare rights and other legal relations of any interested party petitioning for such declaration."

Obviously the language does not create new substantive rights or legal relationships but adds, to remedies previously existing, an additional one for relief in the form of a judgment declaring, in cases of actual controversy, the rights of the parties. Equally as clearly, prior to the passage of the act, no one had a right under the patent laws to initiate suits for affirmative relief in the form of an adjudication that another's patent was invalid or was not infringed. Therefore, appellant contends, the remedy provided by the act does not arise under the patent laws and the court was without jurisdiction.

It is clear that there is an actual controversy between the parties, whether appellee infringes the Edelmann patent. Appellant so charged, stating to appellee's customers and prospective customers that unless the infringement should be discontinued, suit would be entered against appellee and dealers.

Was the controversy one arising under the patent laws?

A somewhat similar question was presented to this court in Webster Co. v. Society for Visual Education, 83 F.(2d) 47, 48. There, diversity of citizenship existed, but there was presented the further question of whether the suit had been begun in the right district. There, as here, the action was for a declaratory judgment, declaring defendant's patents invalid. If the jurisdiction depended upon diversity of citizenship, it was rightfully brought in the district wherein either plaintiff or defendant resided. (Jud.Code § 51, 28 U.S.C. A. § 112.) If it depended upon the existence of a federal question under the patent laws, it could be maintained only in the district where defendant resided. The court held that, irrespective of existence of diversity of citizenship, the suit was, essentially, one under the patent laws and could not be maintained in a district where defendant did not reside, saying: "While here there was diversity of citizenship between the parties, it is clear that jurisdiction was founded not on that fact, but on rights arising under the patent laws, hence the latter provision does not apply." This conclusion having been essential to the decision made in that case, it must stand as the law of this circuit unless overruled. Appellant contends that the court did not fully consider the question in all its aspects and that, upon further consideration, we should decide otherwise.

We adhere to the conclusion then stated. Jurisdiction of the court was properly invoked in the present case. The cause arose under the patent laws of the United States; consequently jurisdiction existed, irrespective of diversity of citizenship.

The Declaratory Judgment Act merely introduced additional remedies. It modified the law only as to procedure and, though the right to such relief has been in some cases inherent, the statute extended greatly the situations under which such relief may be claimed. It was the congressional intent to avoid accrual of avoidable damages to one not...

To continue reading

Request your trial
108 cases
  • Safeco Ins. Co. of Am. v. Nelson, Case No. 20-cv-00211-MMA (AHG)
    • United States
    • U.S. District Court — Southern District of California
    • 24 Junio 2020
    ...judgment actions pertaining to patent rights met this standard. See id. at 19 n. 19, 103 S.Ct. 2841 (citing E. Edelmann & Co. v. Triple-A Specialty Co. , 88 F.2d 852 (7th Cir. 1937) ). Here, the United States has filed no such action against Plaintiff. The "coercive action" at issue has bee......
  • Franchise Tax Board of the State of California v. Construction Laborers Vacation Trust For Southern California
    • United States
    • U.S. Supreme Court
    • 24 Junio 1983
    ...defendant would raise a federal question over which the federal courts have exclusive jurisdiction. See E. Edelmann & Co. v. Triple-A Specialty Co., 88 F.2d 852 (CA7 1937); Hart & Wechsler 896-897. Taking jurisdiction over this type of suit is consistent with the dictum in Public Service Co......
  • City of Altus, Oklahoma v. Carr
    • United States
    • U.S. District Court — Western District of Texas
    • 6 Mayo 1966
    ...period. 14 The purpose of the Declaratory Judgment Act, Title 28, U.S.C., § 2201, was succintly stated in E. Edelmann & Co. v. Triple-A Specialty Co., 88 F.2d 852, 854 (7th Cir. 1937): "It was the congressional intent to avoid accrual of avoidable damages to one not certain of his rights an......
  • Washington Terminal Co. v. Boswell
    • United States
    • U.S. Court of Appeals — District of Columbia Circuit
    • 18 Noviembre 1941
    ...stated in the instant case is subjected are sufficient to invoke exercise of declaratory jurisdiction. In E. Edelmann & Co. v. Triple-A Speciality Co., 7 Cir., 1935, 88 F.2d 852, 854, Lindley, District Judge, speaking for the court, said, in respect of the purpose of the Declaratory Judgmen......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT