General Tire & Rubber Company v. Watkins, 9226

Citation331 F.2d 192
Decision Date01 June 1964
Docket Number9358.,No. 9226,9226
PartiesThe GENERAL TIRE & RUBBER COMPANY, a body corporate, Petitioner, v. The Honorable R. Dorsey WATKINS, United States District Judge for the District of Maryland, Respondent (two cases).
CourtUnited States Courts of Appeals. United States Court of Appeals (4th Circuit)

Charles J. Merriam, Chicago, Ill., Norman P. Ramsey, Baltimore, Md., for petitioner.

Thomas J. Kenney, U. S. Atty., Benjamin C. Howard, Baltimore, Md., Edward S. Irons, Morton Hollander, Atty., Civ. Div., Dept. of Justice, Washington, D. C., for respondent.

Before BOREMAN, BRYAN and BELL, Circuit Judges.

Certiorari Denied June 1, 1964. See 84 S.Ct. 1629.

BOREMAN, Circuit Judge.

Petitioner, The General Tire & Rubber Company (hereinafter General) seeks a Writ of Mandamus to compel The Honorable R. Dorsey Watkins, a judge of the United States District Court for the District of Maryland, to grant a demand and motion for a jury trial made by General in the case of Firestone Tire & Rubber Company, et al. v. The General Tire & Rubber Company, Civil Action No. 12,932, pending in said District Court. Respondent filed his answer to the petition and, pursuant to leave granted by this court, the plaintiffs in said civil action are appearing herein in opposition to the issuance of a writ of mandamus.

General has heretofore sought to obtain the aid of this court by way of mandamus to compel Judge Watkins to transfer said civil action to a Federal District Court in the State of Ohio. See General Tire & Rubber Company v. Watkins, 326 F.2d 926 (4 Cir., January 7, 1964), in which petition for mandamus was denied. General has recently filed a petition for certiorari seeking review of that decision. 84 S.Ct. 1166.

Civil Action No. 12,932 in the Maryland District Court is an action for a declaratory judgment brought against General by the Firestone Tire & Rubber Company and McCreary Tire & Rubber Company (the last two named hereinafter referred to as Firestone and McCreary, respectively) seeking a declaration of patent invalidity and noninfringement. The complaint was filed on March 30, 1961. Discovery procedures have been extensively pursued and the District Court has been required to conduct hearings and to consider and pass upon numerous motions which need not be detailed here.

On November 20, 1963, General filed an affidavit of prejudice with respect to Respondent, Judge Watkins, and on November 22, 1963, Judge Watkins refused to disqualify himself.

On January 13, 1964, Firestone and McCreary filed, in Civil Action No. 12,932, what purported to be a "Notice Pursuant to 35 U.S.C. 282," which sets forth various "references" and witnesses on which or whom they propose to rely in contesting the validity of General's U. S. Patent No. 2,964,083. On January 31, 1964, another such "Notice," pertaining to eighteen United States patents, three Canadian patents and other matters, was filed.

On January 15, 1964, General filed a demand for a jury trial "as of right" under Rule 38(b) of F.R.Civ.P. of all issues included within the January 13, 1964, notice, termed by General a "pleading," and filed also a Motion under Rule 39(b) F.R.Civ.P. for a jury trial of all issues with respect to the validity and infringement of the patent in suit except the issue of an alleged license in one or both plaintiffs. On January 16, 1964, Firestone and McCreary filed a Motion to Strike General's demand and opposed the granting of the Rule 39(b) Motion. On January 24, 1964, Judge Watkins, in an oral opinion, denied the motion to strike and the demand and motion for a jury trial.

Two broad questions are posed here arising from the refusal of a trial by jury: (1) Was General entitled to a jury trial as of right; and (2) was the denial of the motion for a jury trial under Rule 39(b) an abuse of the District Court's discretion under the circumstances? Involved are certain statutes and rules of civil procedure which will be hereinafter noted either in the text or appropriate footnotes.

We are inclined to the view that General's petition for Writ of Mandamus is properly before us for consideration since the question presented pertains to a denial of the constitutional right to trial by jury. In Dairy Queen v. Wood, 369 U.S. 469, 472, 82 S.Ct. 894, 897, 8 L.Ed. 2d 44 (1962), the Court in referring to Beacon Theatres, Inc., v. Westover, 359 U.S. 500, 79 S.Ct. 948, 3 L.Ed.2d 988 (1959), said:

"Our decision reversing that case * * * emphasizes the responsibility of the Federal Courts of Appeals to grant mandamus where necessary to protect the constitutional right to trial by jury * * *."

General bases its request for mandamus upon the following facts and contentions. Firestone and McCreary filed their original complaint on March 30, 1961. An amended complaint was filed on October 13, 1961, alleging, inter alia, (a) that the alleged invention had been patented or described in printed publications prior to the alleged invention thereof by applicants, or more than one year before application for the patent was filed in the Patent Office; and (b) that the alleged invention was in public use or on sale in this country prior to the invention thereof by the applicants, or more than one year prior to the date of the patent application.

To allegation (a) above was added the following: "Plaintiffs will give notice to defendant of such patents and printed publications in accordance with 35 U.S.C. Section 282." To allegation (b) above was added the following: "Plaintiffs will give notice to the defendant of the names and addresses of such prior users in accordance with 35 U.S.C. Section 282." The notice filed by Firestone and McCreary on January 13, 1964, hereinbefore mentioned, was given pursuant to the provisions of the amended complaint by which General was advised that such notice would be given.

General contends that the notice of January 13, 1964, is a "pleading" within the meaning of F.R.Civ.P. 38(b) which provides that demand for jury trial of any issue triable of right by a jury may be made not later than ten days after the service "of the last pleading directed to such issue" and thus General's demand for jury trial filed on January 15, 1964, was timely. In any event, contends General, the District Court abused its discretion in refusing to grant a jury trial under F.R.Civ.P. 39(b) which provides, in substance, that the court in its discretion upon motion may order a trial by a jury of any or all issues.

It is further argued that 35 U.S.C. § 2821 establishes special pleading rules for patent infringement cases that are inconsistent with the federal rules and supersede them to that extent; that, ordinarily, Rule 7(b) would define the term "pleading" as it is used in Rule 38(b); that 35 U.S.C. § 282 requires the party who attacks the validity of a patent to plead in detail the specific facts upon which he relies, and if he does not do so he cannot introduce evidence at the trial with respect to matters attacking the validity of the patent; that in the instant case Firestone and McCreary had pleaded only skeletal defenses until they filed their "notice" on January 13, 1964, and which was amended or supplemented by the notice of January 31, 1964.

Jury Trial of Right — Waiver — Revival

The Seventh Amendment to the Constitution of the United States provides:

"In Suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved, and no fact tried by a jury, shall be otherwise reexamined in any Court of the United States, than according to the rules of the common law." (Emphasis ours.)

The Seventh Amendment did not create a right to a jury trial but merely preserved rights then existing at common law.2 It has been consistently held that "neither the Sixth nor the Seventh Amendment is jurisdictional in nature and hence the right to jury trial may be waived."3 Professor Moore cited Kearney v. Case, 12 Wall. 275, 281, 20 L.Ed. 395, 396 (1870), in which the Supreme Court said:

"Undoubtedly both the Judiciary Act and the amendment to the Constitution secured the right to either party in a suit at common law to a trial by jury, and we are also of opinion that the statute of 1789 intended to point out this as the mode of trial in issues of fact in such cases. Numerous decisions, however, had settled that this right to a jury trial might be waived by the parties, and that the judgment of the court in such cases should be valid." (Cited cases omitted.)

The right to jury trial is not automatic. If not timely demanded, the right is waived. Rules 38(b) and (d) of the F.R.Civ.P. are set out below.4 The question arises as to whether the notice under 35 U.S.C. § 282 was a pleading within the meaning of Rule 38(b). If not, "the last pleading directed to" the issues of validity and infringement was a reply filed by Firestone and McCreary on December 1, 1961, to General's counterclaims, and the rights of both the plaintiffs and the defendant to a jury trial on those issues would be waived ten days after that date.5

Rule 7(a) F.R.Civ.P. defines pleadings as follows:

"(a) Pleadings. There shall be a complaint and an answer; a reply to a counterclaim denominated as such; an answer to a cross-claim, if the answer contains a cross-claim; a third-party complaint, if a person who was not an original party is summoned under the provisions of Rule 14; and a third-party answer, if a third-party complaint is served. No other pleading shall be allowed, except that the court may order a reply to an answer or a third-party answer."

It is plain that a "notice" under 35 U.S.C. § 282 is excluded from the definition of Rule 7(a). By its express terms, section 282 precludes characterization of such a "notice" as a "pleading." Said section 282 is set forth in full in footnote 1. The defenses which shall be pleaded under section 282 include noninfringement and invalidity, but the notice of specific art and witnesses...

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