ACF Industries, Incorporated v. Hecht, Civ. A. No. W-3222

• Decision Date: 16 February 1967
• Docket Number: Civ. A. No. W-3222,W-3558.
• Citation: 284 F. Supp. 572
• Parties: ACF INDUSTRIES, INCORPORATED, Plaintiff, v. Victor HECHT, and the Hecht Valve Company, Inc., Defendants (two cases).
• Court: U.S. District Court — District of Kansas

284 F. Supp. 572

ACF INDUSTRIES, INCORPORATED, Plaintiff, v. Victor HECHT, and the Hecht Valve Company, Inc., Defendants (two cases).

Civ. A. Nos. W-3222, W-3558.

United States District Court D. Kansas.

February 16, 1967.

John O. Tramontine and William J. Barnes, of Fish, Richardson & Neave, New York City, Mikel Stout, of Foulston, Siefkin, Powers, Smith & Eberhardt, Wichita, Kan., for plaintiff.

Thomas A. Bush, Wichita, Kan., John J. Watts, Odessa, Tex., Clarence E. Keys, Monahans, Tex., for defendants.

MEMORANDUM DENYING MOTIONS

WESLEY E. BROWN, District Judge.

These actions are before the court on defendants' motion to dismiss, or in the alternative, to transfer to the United States District Court for the Western District of Texas, sitting in El Paso, on the ground of forum non conveniens.

The following history of the case may be helpful to a discussion of the motions herein. On April 1, 1960, plaintiff filed a patent application on behalf of two of its employees, for a carburetor valve which is the subject of this litigation. The same year, on August 15, Hecht applied for the patent here in suit, claiming a carburetor valve construction which was also shown in plaintiff's earlier application.

On September 18, 1962, after various proceedings in the patent office which are not involved here, Hecht was granted Patent No. 3,054,594, here in suit, without a determination of the issue of priority as between plaintiff and Hecht having been decided. On February 12, 1963, the Patent Office declared an interference, No. 93,403, in which the sole issue was which of the parties first made the valve. The interference has since been decided, on December 28, 1965. Priority of Claim 2 was awarded to Hecht, and that of Claim 4 to ACF.

A year and a half before this decision, however, on June 18, 1964, Hecht filed a complaint in the United States District Court for the Western District of Texas, which as amended, charges ACF Industries and its customers with infringing Claims 1, 2 and 4 of his patent. Twelve days later, on June 30, 1964, ACF Industries filed Civil Action No. W-3222 in this court seeking a declaratory Judgment that Hecht's patent is invalid and not infringed by ACF, and an injunction restraining defendants from bringing other infringement actions against plaintiff's customers. Defendants have counterclaimed in W-3222, charging infringement in Claims 1, 2 and 4 of the Hecht patent.

On September 16, 1965, again prior to the conclusion of the interference proceeding, Judge Suttle of the Texas court ordered that the Texas action there be stayed pending the final determination of Civil Action No. W-3222 in this court. On December 16, 1966, Judge Guinn of the United States District Court for the Western District of Texas vacated the stay order and set the Texas action down for trial commencing May 1, 1967. Judge Guinn also denied Hecht's motion for an order restraining ACF Industries from proceeding with the cases now before this court.

The second action in this court, Civil Action No. W-3558, was filed January 17, 1966, seeking review of the Patent Office decision in the interference proceeding decided, as noted above, the preceding December 28, 1965.

The motion to dismiss is based on at least two grounds: (1) that the United States District Court for the Western District of Texas acquired exclusive jurisdiction of the subject matter of the instant suits, because the infringement action was filed there first; (2) that at the time that action was commenced, it could not have been brought in this court, and that no subsequent conduct could confer jurisdiction here.

First, it seems clear that a pending infringement action does not affect jurisdiction in a subsequently filed declaratory judgment action. In Penn Electric Switch Co. v. United States Gauge Co., 129 F.2d 166, 167 (7 Cir. 1942), cert. denied, 317 U.S. 675, 63 S.Ct. 80, 87 L.Ed. 541, cited by plaintiff, the court wrote:

"There was no jurisdictional obstacle to the bringing, or to the maintenance of a suit for a declaratory decree (growing out of an alleged erroneous assertion of validity and infringement of a claim of a patent), based on the pendency of a patent suit on the same patent and claim, between the same parties, in another court having jurisdiction of the infringement suit and of the parties. The granting of a declaratory judgment lies in the sound discretion of the trial judge."

Prior commencement of the infringement action is not a jurisdictional bar to either the declaratory judgment action or the proceeding to review the Patent Office interference proceeding.

Defendants state in their brief that, at the time the Texas infringement action was commenced, it could not have been brought in this court, and that no subsequent conduct could confer jurisdiction here. This contention seems irrelevant to the question of our jurisdiction of suits originally commenced in this court.

In support of their claim that the Texas court has exclusive jurisdiction, movants rely upon 28 U.S.C. § 1400(b).

"Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business."

That section is the venue provision for patent infringement actions only. Both W-3222, the declaratory judgment action, and W-3558, the review proceeding under 35 U.S.C. § 146, are governed by the general venue statute, 28 U.S.C. § 1391.

Movants...