Colgate & Co. v. Procter & Gamble Mfg. Co.

• Decision Date: 15 March 1928
• Docket Number: No. 3372.,3372.
• Citation: 25 F.2d 160
• Parties: COLGATE & CO. et al. v. PROCTER & GAMBLE MFG. CO.
• Court: U.S. District Court — Eastern District of New York

25 F.2d 160 (1928)

COLGATE & CO. et al. v. PROCTER & GAMBLE MFG. CO.

No. 3372.

District Court, E. D. New York.

March 15, 1928.

Charles Neave, Mason Trowbridge, Willis H. Taylor, Jr., and Alexander C. Neave, all of New York City, for plaintiffs.

Wallace R. Lane, of Chicago, Ill., John C. Kerr, of New York City, and Frank F. Dinsmore and Marston Allen, both of Cincinnati, Ohio, for defendant.

INCH, District Judge.

Motion by defendant to dismiss the complaint for lack of jurisdiction in a suit for alleged infringement of certain patents.

The plaintiffs are, respectively, a corporation inhabitant of the state of New Jersey and a corporation inhabitant of the state of Delaware. These plaintiffs have commenced a suit in this court (Eastern district of New York) against the defendant, a corporation inhabitant of the state of Ohio. This defendant has a regular and established place of business at Staten Island, state of New York, Eastern district of New York. By the complaint plaintiff charges "that the defendant threatens to commit and/or has committed" certain acts of infringement within the Eastern district of New York and elsewhere (paragraph 3 of the complaint).

The patents have not been discussed before me, and my information is only such as may be gained from the complaint and motion papers, which indicate that these patents cover a certain soap product and a process by which it is made. I am unable to determine whether this process requires any particular construction of buildings, and infer that it does not, in view of plaintiff's contention on this argument, unless, possibly, a structure entirely completed and usable. The proof shows that any buildings, in question here, of defendant, have not been completed or used. The burden is upon plaintiff to show that any essential step in a process has been infringed. No such proof has been offered.

It is unnecessary to state the relationship between the plaintiffs, or between the main office of defendant in Ohio and its plant in this Eastern district of New York; suffice it to say that the bill of complaint asks for the usual accounting and injunction. The suit, as above indicated, has not been brought against the defendant in the state of Ohio, the state of Delaware, or the state of New Jersey, but in the state of New York, this Eastern district.

The defendant has duly appeared specially, and, by this motion to dismiss the complaint, has raised, at the threshold of the litigation, the important question of this court's jurisdiction. On the return day of this motion, a question of fact being involved, this court duly took testimony and reserved decision. Canadian R. Co. v. Wenham (C. C.) 146 F. 206. Excellent and careful briefs have been submitted by both sides.

It is conceded that defendant (Ohio inhabitant) has a regular and established place of business in this district (at Staten Island). It further appears, and I so find, that shortly prior to the commencement of the suit the defendant plainly intended to operate a plant at Staten Island, as a part of its regular and established place of business there, at which plant, when built and finished, was to be manufactured and sent out for sale a large amount of the soap product "Selox," a product and by a process which plaintiff claims will and does infringe plaintiff's valid patents. This extra plant, according to the best estimate of Mr. Brown, defendant's superintendent of its entire plant at Staten Island, can yet be completed entirely and be ready to "go ahead and make Selox" in three or four weeks.

There are also now on hand approximately 30,000 cartons and wrappers to be used. These have been on hand since the early part of November. The complaint was filed in the clerk's office in this court December 14, 1927. The subpœna was served upon an assistant superintendent of the Staten Island plant.

Defendant objects to the jurisdiction of this court on the ground that, for various reasons, this process was not duly served, and also on the ground that, on the state of facts shown to exist, this suit could not be commenced in this district. We need only consider the last-mentioned objection.

At the outset the jurisdiction of this court must be shown by plaintiff to exist. It cannot be presumed, nor even inferred. Continental Ins. Co. v. Rhoads, 119 U. S. 237, 7 S. Ct. 193, 30 L. Ed. 380; Ex parte Smith, 94 U. S. 455, 24 L. Ed. 165; Robertson v. Cease, 97 U. S. 646, 24 L. Ed. 1057; U. S. v. Southern Pacific (C. C.) 49 F. 297; Brown v. Keene, 8 Pet. 112, 8 L. Ed. 885.

It cannot be conferred by consent. Chicago R. Co. v. Willard, 220 U. S. 413, 31 S. Ct. 460, 55 L. Ed. 521.

The merits of an action cannot be considered in determining the jurisdiction. Flanders v. Coleman, 250 U. S. 223, 39 S. Ct. 472, 63 L. Ed. 948.

It is the duty of the District Court to inquire into the question of its jurisdiction, even on its own initiative and at the outset of the litigation. Cunard Co. v. Smith (C. C. A.) 255 F. 846.

It is likewise the duty of the defendant to bring the matter to the attention of the court. Gilbert v. David, 235 U. S. 561, 35 S. Ct. 164, 59 L. Ed. 360. The jurisdiction question is fundamental. It does not relate to that right or power of a court, after trying the cause, to decide whether a violation, or a threatened violation, of a right shall be prevented, or whether injunctive relief for this or for some other cause shall be granted, but relates to whether or not the court has jurisdiction to exercise any judicial power whatever in the suit, other than to pass on this question of whether it has such jurisdiction. Nashville R. R. Co. v. Taylor (C. C.) 86 F. 168; Levinson v. United States, 258 U. S. 198, 42 S. Ct. 275, 66 L. Ed. 563.

The jurisdiction of this court is not inherent, but is the result of statute.

This is a civil suit. It is instituted to compel payment or the doing of some other thing which is purely civil. Bouv. Law Dict. (Rawle's 3d Rev.) p. 496.

Judicial Code, § 51 (28 USCA § 112), provides that no civil suit shall be brought in any District Court against any person by any original process or proceeding in any other district than that whereof he is an inhabitant. The defendant is conceded to be an inhabitant of the state of Ohio. The same section provides: "But where the jurisdiction is founded only on the fact that the action is between citizens of different states, suit shall be brought only in the district of the residence of either the plaintiff or the defendant." The suit has not been brought in either the state of New Jersey, or the state of Delaware, where plaintiffs reside, or in the state of Ohio, where the defendant resides.

If this was an ordinary civil suit, no matter how important the result might be to the parties, there would be no question in what jurisdiction the suit must be commenced. The suit, however, is a patent suit, and Congress has withdrawn, in such suits, this protection, if it may be so called, given a defendant in the usual civil suit, by section 51, and has widened the jurisdiction available to a plaintiff, where a defendant has actually infringed a patent in any district where such defendant has a regular and established place of business. This statute is section 48 of the Judicial Code (28 USCA § 109). It permits such suits to be brought "in the district of which the defendant is an inhabitant or in any district in which the defendant shall have committed acts of infringement and have a regular and established place of business." (Italics mine.)

"Infringement alone will not give jurisdiction, a regular place of business alone will not give jurisdiction, both must concur." Bowers v. Atlantic Co. (C. C.) 104 F. 887; Streat v. American Rubber (C. C.) 115 F. 634; Cheatham Co. v. Transit Co. (C. C.) 191 F. 727; Edison v. Allis Co. (C. C.) 191 F. 837. The fact that defendant has a regular and established place of business in the Eastern district of New York is not disputed by defendant. The defendant does dispute that it has committed any act of infringement in the Eastern district of New York, or that it threatens so to do.

The sole question remaining, therefore, is confined to this question of infringement. Plaintiff's able argument is in substance as follows:

"No violence is done to the language of section 48, if the words `acts of infringement' be construed to include threatened acts of infringement consisting of actual preparations therefor. This strains the phraseology no more than does the liberal interpretation of the words `suits * * * for infringement' to include suits for threatened infringement. It is submitted that it was the intent of Congress, first, to provide a rule for all patent infringement suits; and, second, to permit any such suit to be brought in any district where the acts were done which gave rise to the cause of action and where defendant had a regular place of business. `Suits * * * for the infringement of letters patent' may be brought wherever the defendant `shall have committed acts' which are the basis for...