Allington v. Shevlin-Hixon Co.

Citation2 F.2d 747
Decision Date24 November 1924
Docket NumberNo. 532.,532.
PartiesALLINGTON et al. v. SHEVLIN-HIXON CO.
CourtU.S. District Court — District of Delaware

William G. Mahaffy, of Wilmington, Del., for plaintiffs.

Alfred H. Hildreth, of Boston, Mass., and Charles W. Smith, of Wilmington, Del., for defendant.

MORRIS, District Judge.

The plaintiffs have moved that the bill of complaint, filed by them against the Shevlin-Hixon Company to enjoin the alleged infringement by that company of letters patent No. 1,123,155, owned by the plaintiffs, be dismissed without prejudice and with costs against the plaintiffs. An answer has been filed. No counterclaim is therein made. No testimony has been taken by either party. After the motion was set down for hearing, H. J. Burns asked to be made a party defendant. In his petition of intervention he alleges that he is the manufacturer of the apparatus claimed to infringe; that the apparatus in the plant of the Shevlin-Hixon Company, here complained of, was installed by him; that he assumed the defense of this suit, and has paid the expenses thereof with the knowledge of the plaintiffs; that he is informed and believes that prospective customers of defendant's apparatus have been threatened by the plaintiffs with infringement suits; that his business has been thus interfered with to his damage; and that he desires to avoid a multiplicity of suits and further damage to himself by having the question of whether or not the apparatus manufactured by him is an infringing one finally and promptly settled in and by this suit. In his proposed answer, which was submitted with the petition to intervene, Burns makes the allegations usual in an answer filed in an infringement suit. He also repeats therein the statements made, as above narrated, in his petition of intervention. He prays in his answer, not only that the bill of complaint be dismissed, but also, in reliance upon Kessler v. Eldred, 206 U. S. 285, 27 S. Ct. 611, 51 L. Ed. 1065, that the plaintiffs be perpetually enjoined from suing or threatening with suit on patent No. 1,123,155 either Burns or any purchaser, actual or prospective, of Burns' apparatus constructed and operating like the device alleged in the bill of complaint to operate in infringement of that patent. The motion of plaintiffs to dismiss their bill and the motion of Burns to intervene as a party defendant have been heard together. Affidavits have been filed by the plaintiffs and by Burns. The Shevlin-Hixon Company has done nothing with respect to either motion.

There is no local rule touching the voluntary dismissal of bills in equity. In the absence of such a rule the general principles of law pertaining thereto must govern. These principles have been recently summarized by Mr. Chief Justice Taft in Ex parte Skinner & Eddy Corp., 265 U. S. 86, 44 S. Ct. 446, 68 L. Ed. 912. There the following statement of the rule made in City of Detroit v. Detroit City Ry. Co. (C. C.) 55 F. 569, and approved in Pullman's Palace-Car Co. v. Central Transportation Co., 171 U. S. 138, 146, 18 S. Ct. 808, 43 L. Ed. 108, was again approved: "It is very clear from an examination of the authorities, English and American, that the right of a complainant to dismiss his bill without prejudice, on payment of costs, was of course except in certain cases. Chicago & A. R. Co. v. Union Rolling-Mill Co., 109 U. S. 702. The exception was where a dismissal of the bill would prejudice the defendants in some other way than by the mere prospect of being harassed and vexed by future litigation of the same kind."

In the Skinner & Eddy Case it was further said: "The usual ground for denying a complainant in equity the right to dismiss his bill without prejudice at his own costs is that the cause has proceeded so far that the defendant is in a position to demand on the pleadings an opportunity to seek affirmative relief and he would be prejudiced by being remitted to a separate action. Having been put to the trouble of getting his counter case properly pleaded and ready, he may insist that the cause proceed to a decree."

In Kessler v. Eldred, 206 U. S. 285, 27 S. Ct. 611, 51 L. Ed. 1065, it was held that the manufacturer of an apparatus after he has prevailed in an infringement suit instituted against him may, by a new suit brought by him for that purpose, obtain a decree of a court of equity restraining the person who was defeated in the infringement suit from interfering with the business of the manufacturer by bringing other infringement suits, based on the same patents and with respect to the identical device, against the customers of the manufacturer.

Before taking up the questions of Burns' right to intervene, the right of an intervener to obtain affirmative relief not obtainable by the original defendant, the right of an intervener to oppose a motion of a plaintiff to dismiss its own bill, and, if an intervener has such right, whether a person who delays making an application to intervene and to obtain affirmative relief until after plaintiffs move to dismiss their bill does not come too late successfully to oppose the motion to dismiss, let Burns' right to prevail in his opposition to plaintiffs' motion be first tested as if he were the original and sole defendant, and that, as such defendant, he had filed the answer he now offers to file. As the general rules touching the right of a plaintiff to dismiss his own bill apply with like force to an infringement suit in equity against the manufacturer of the alleged infringing device, Burns could not, even if he were an original and sole defendant,...

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  • Leach v. Ross Heater & Mfg. Co.
    • United States
    • U.S. District Court — Western District of New York
    • December 1, 1938
    ...praying for a discovery, when the discovery was directed solely to matters of defense to plaintiff's cause of action. Allington v. Shevlin-Hixon Co., D.C., 2 F.2d 747, discloses a request of a third party manufacturer of a device to intervene in a suit against a purchaser of his device, sub......

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