Frederick Hart & Co. v. Recordgraph Corporation, Civil Action No. 999.
| Citation | 73 F. Supp. 146 |
| Decision Date | 08 September 1947 |
| Docket Number | Civil Action No. 999. |
| Parties | FREDERICK HART & CO., Inc., v. RECORDGRAPH CORPORATION. |
| Court | U.S. District Court — District of Delaware |
Thomas Cooch (Marvel & Morford) of Wilmington, Del., Willis H. Taylor, Jr., John T. Farley, and Harold A. Traver (Pennie, Edmonds, Morton & Barrows) all of New York City, for plaintiff.
Robert H. Richards, Jr. (Richards, Layton & Finger), of Wilmington, Del., George T. Bean, Robert M. Anstett, and Ralph L. Chappell (Kenyon & Kenyon, all of New York City for defendant.
The present matter is based upon a suit for a declaratory judgment that fifteen numbered patents owned by the defendant are invalid and are not infringed by the plaintiff. The immediate problem is the disposition of certain motions of the defendant. The defendant has moved (1) to dismiss the complaint under Federal Rules of Civil Procedure, rule 12(b) (1), 28 U.S.C.A. following section 723c, on the ground that no controversy existed at the time of filing the complaint; (2) for a summary judgment; and (3) for a stay of the present proceedings subject to the disposition of proceedings pending in New York.
The material facts necessary to be considered are as follows: The defendant, owning fifteen patents, on May 24, 1943, assigned the exclusive rights therein to the plaintiff; the plaintiff on September 17, 1946, and pursuant to the terms of the assignment, gave notice that the agreement would be terminated 90 days after such date, to wit, on or about December 17, 1946. On January 18, 1947, the plaintiff filed its present complaint in this court. On January 20, 1947, the defendant filed its complaint in the United States Court for the Southern District of New York alleging infringement by the present plaintiff of four numbered patents, being four of those involved in this Delaware action.
Subsequently the defendant in this court directed interrogatories to the plaintiff seeking information as to the foundation of the alleged "controversy" as the basis of jurisdiction of this court. The propriety of those interrogatories was sustained by an opinion of this court on April 18, 1947, Hart v. Recordgraph Corp., D.C. 7 F.R.D. 43.
On May 5, 1947, the plaintiff answered the interrogatories stating, on information and belief, that the Treasurer of the defendant company asserted and charged infringement by the plaintiff, such assertions and charges being allegedly made to one Mr. Weber at the Navy Department in Washington. It was stated that the communication was oral and in the following terms:
"Fredrick Hart & Co., Inc., having given notice of its cancellation of its license with Recordgraph Corporation and having indicated it will continue to manufacture and sell the apparatus heretofore made under the Recordgraph license, Hart Company will be operating on its own and Recordgraph Corporation intends to contest Hart Company's so doing by suit under Recordgraph patents."
The plaintiff also, in answer to the interrogatories, relied upon a statement in the complaint filed January 20, 1947, by the present defendant in the infringement suit in the New York court that "defendant has had notice of its infringement of the claims of the said Letters Patent, but despite this fact has continued and threatens to continue its infringement."
The defendant, as heretofore stated, has filed three alternative motions, (1) to dismiss the complaint on the ground that no controversy existed, (2) for summary judgment, and (3) for a stay of the present proceedings pending the disposition of the proceedings in New York.
In support of these motions the defendant has filed the affidavit of William S. Murray, Jr., purporting to state the exact facts of the interview with Mr. Weber at the Navy Department in which conversation the supposed controversy is alleged to have had its origin. The affidavit explicitly denies the language attributed to him and expressly denies any threat of suit for patent infringement of any kind. The defendant contends that the sole purpose of the interview was to acquaint the customers that the license agreement would be terminated and that the defendant would re-engage in business and sought to be notified of the requirements of the Navy Department so as to bid on such needs.
Since the alleged purpose of the visit of Murray to the Navy Department was to read a letter from Woolf, President of the defendant company, and to ascertain the needs of the Navy Department, and as much reliance is had upon the contents of the letter as establishing the controversy, so the letter which Murray read to Weber becomes material. This letter was as follows:
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