AC Gilbert Co. v. United Electrical Mfg. Co.

• Decision Date: 01 July 1929
• Docket Number: No. 2768.,2768.
• Parties: A. C. GILBERT CO. v. UNITED ELECTRICAL MFG. CO.
• Court: U.S. District Court — Western District of Michigan

33 F.2d 760 (1929)

A. C. GILBERT CO. v. UNITED ELECTRICAL MFG. CO.

No. 2768.

District Court, E. D. Michigan, S. D.

July 1, 1929.

Stuart C. Barnes, of Detroit, Mich., for plaintiff.

Owen & Owen, of Toledo, Ohio, for defendant.

TUTTLE, District Judge.

This patent infringement suit is now before the court on a motion of the plaintiff that its bill of complaint herein be dismissed without prejudice. This motion is opposed by the defendant on the ground that such a dismissal without prejudice would inequitably prejudice it, and should not be permitted by the court. Whether the plaintiff is entitled to the dismissal so sought is the sole question involved.

The bill, by appropriate recitals, alleges infringement by the defendant of a certain patent owned by the plaintiff on a beverage mixer device. The answer filed by the defendant denies both the validity of the patent and any infringement thereof by the defendant. The answer then concludes with the following paragraph:

"Further answering, defendant avers that it is manufacturing and selling a number of electrically operated devices under the trademark brand of `Eskimo'; that it has developed a large and extensive business and goodwill in such goods and trade name; that plaintiff is manufacturing and selling a similar line of goods under the trade-mark brand of `Polar Cub,' and that many of the articles manufactured and sold by plaintiff are for the same purposes as those manufactured and sold by defendant and are sold in competition with defendant's `Eskimo' brand of articles; that immediately upon filing its bill of complaint herein plaintiff sent circular letters broadcast to the trade, and particularly to defendant's customers, stating generally that plaintiffs `Polar Cub' brand of articles are manufactured under patents fully protecting the same and that defendant's `Eskimo' brand of articles infringe on such patents and that suit for infringement has been filed in this court against defendant, without referring to any particular patent of plaintiff's or specifying any particular article of defendant's alleged to infringe; that these notices were not sent out in good faith, but in an endeavor to and with the intent of injuring defendant's business in general and of securing defendant's trade in its various `Eskimo' brand of articles; that defendant has been materially embarrassed and damaged by plaintiff's conduct in this respect and has and will lose considerable business — how much, it has no way of knowing and never will; and that plaintiff, by reason of such acts, is not doing equity and is not entitled to any equitable relief herein."

It is asserted by the defendant, and not denied by the plaintiff, that one of the letters sent out by the plaintiff as just mentioned was as follows:

"Gentlemen: Electrical products sold under our `Polar Cub' brand are covered by various patents, and in respect to each and all of those patents it is our policy to protect ourselves and our dealers to a maximum extent by making all reasonable and proper efforts to enjoin the sale of competitive devices which, as we are or may be advised, are infringements of the exclusive rights granted to us.

"In pursuance of that policy, we have recently instituted suit for patent infringement in the United States District Court for the Eastern District of Michigan, Southern Division, against United Electrical Mfg. Company of Adrian, Michigan, applying to `Eskimo' brand, asking for the usual preliminary and final injunctions and an accounting of profits and damages.

"In respect to all patents granted to or controlled by our Company, it is our intention to take such action as may be required for the complete protection of our interests.

"Cordially yours "Signed H. L. Trisch. "H. L. Trisch. "Sales & Advertising."

In the motion to dismiss without prejudice, and in the affidavit filed in support thereof, it is stated that, after the commencement of this suit, the plaintiff instituted a suit, based on the patent here involved, and also on additional patents, in the federal District Court for the district of Connecticut (where the plaintiff has its principal place of business), against a customer of the defendant, in which suit the defendant has intervened, and that "plaintiff prefers to try the matter in its own district to thereby save considerable expense and facilitate the production of its witnesses for the trial." No testimony has yet been taken herein.

The defendant opposes the motion to dismiss without prejudice, and insists that, in view of the conduct of the plaintiff in publishing to the trade, including the customers of the defendant, the charges of infringement and notices of suit already mentioned, it would be unfair and inequitable to the defendant to now permit the plaintiff to discontinue this suit without prejudice and to thus leave these charges in the minds of the public without an opportunity on the part of the defendant to meet and disprove such charges. I cannot avoid the conclusion that the defendant is...