American Electric Welding Co. v. Lalance & Grosjean Mfg. Co.

• Decision Date: 18 March 1918
• Docket Number: 1315.
• Citation: 249 F. 968
• Parties: AMERICAN ELECTRIC WELDING CO. et al. v. LALANCE & GROSJEAN MFG. CO.
• Court: U.S. Court of Appeals — First Circuit

249 F. 968

AMERICAN ELECTRIC WELDING CO. et al. v. LALANCE & GROSJEAN MFG. CO.

No. 1315.

United States Court of Appeals, First Circuit.

March 18, 1918

Alan D Kenyon, of New York City (J. Lewis Stackpole and Van Courtlandt Lawrence, both of Boston, Mass., on the brief) for appellants.

Charles F. Choate, Jr., of Boston, Mass. (E. Henry Lacombe, of New York City, and Donald Mackenzie, of Flushing, N.Y., on the brief), for appellee.

Before BINGHAM and JOHNSON, Circuit Judges, and ALDRICH, District judge.

BINGHAM Circuit Judge.

This is a bill in equity for the infringement of a patent, brought by the American Electric Welding Company, a New York corporation, and the Thomson Spot Welder Company, a Massachusetts corporation, against the Lalance & Grosjean Manufacturing Company, a New York corporation. The suit was begun in the United States District Court for Massachusetts pursuant to section 48 of the Judicial Code, which provides:

'In suits brought for the infringement of letters patent the District Courts of the United States shall have jurisdiction, in law or in equity, in the district of which the defendant is an inhabitant, or in any district in which the defendant * * * shall have committed acts of infringement and have a regular and established place of business. If such suit is brought in a district of which the defendant is not an inhabitant, but in which such defendant has a regular and established place of business, service of process, summons, or subpoena upon the defendant may be made by service upon the agent or agents engaged in conducting such business in the district in which suit is brought.'

In the bill it was alleged that the defendant was an inhabitant and citizen of the state of New York, that it had a regular and established place of business in the district of Massachusetts, and that it had committed acts of infringement there. The bill having been filed in court and a writ of subpoena issued thereon, the process on June 12, 1917, was served 'on the within-named Lalance & Grosjean Manufacturing Company, by giving in hand to George A. Bath, manager of Lalance & Grosjean Manufacturing Company, room 404, 261 Franklin street, Boston, in said district, a true and attested copy of this subpoena.'

June 15, 1917, the plaintiffs filed a motion for a preliminary injunction and affidavits in support thereof. June 26, 1917, the defendant appeared specially, objected to the jurisdiction of the court, and filed a motion, together with affidavits in support thereof, to quash the service of process upon it and to dismiss the bill for the following reasons:

'(1) Because it has not been made to appear that the defendant has a regular and established place of business within the district of Massachusetts.

'(2) Because it has not been made to appear that acts of infringement have been committed by it within said district.

'(3) Because no service of process has been made upon any agent engaged in conducting its business in said district.

'(4) Because the service of the order to show cause is insufficient to require the defendant to appear and plead.'

It thus appears that, as the defendant was not an inhabitant and citizen of Massachusetts, jurisdiction of the District Court was invoked and depended upon whether the defendant had committed acts of infringement and had a regular and established place of business in the district of Massachusetts, and whether the subpoena in question had been served upon an agent of the defendant engaged in conducting such business in the district.

A hearing having been had on the respective motions of the plaintiffs and the defendant, the District Court, on July 31, 1917, filed an opinion in which it made certain findings of fact and rulings of law. It found that the defendant had a place of business at room No. 404, 261 Franklin street, Boston, in charge of George A. Bath, as salesman, assisted by a clerk, Miss Edwards; that the business conducted there consisted only in taking orders and forwarding them to the home office of the company in New York for acceptance or rejection; that Bath had no authority 'to complete transactions there on its behalf, or to represent it there in negotiations so as to bind it'; and that he never 'assumed to exercise such authority there.' It was ruled that the nature of the business conducted at the Franklin street office was such that the defendant did not maintain a regular and established place of business there within the meaning of section 48. It was also found that the course of business above pointed out did not involve acts of infringement by the defendant, and that the evidence disclosed but a single instance tending to show any departure from such course of business. This was on a certain occasion when one Landeck, at the solicitation of the plaintiffs, went to the Franklin street office in Bath's absence and prevailed on Miss Edwards to let him leave an order for certain articles to be delivered to one Kamins, at his store in Cambridge; that she received from him $12.36, the amount which, at his request, she figured the articles to come to, the order being for articles welded according to the method of the patent; that, before signing the memorandum and receiving the money, she told Landeck she would have to submit the order to the company, who would be at liberty to refuse both the order and the money; and that the defendant, in accepting the money and filling the order, did this in New York. It was thereupon ruled that acts of infringement in Massachusetts were not shown. Having made these findings and rulings, it was further ruled that the service of the subpoena on Bath was not due service on the defendant, that the motions to quash and dismiss should be granted, and that, jurisdiction not appearing, no injunction was to issue. Pursuant to this opinion a formal decree was entered, the material portions of which are as follows:

'It is ordered and decreed that defendant's motion to quash the service of the subpoena herein be, and the same hereby is, granted; and it is

'Further ordered and decreed that defendant's motion to dismiss the bill of complaint herein for want of jurisdiction be, and the same hereby is, granted; and it is

'Further ordered and decreed that plaintiffs' motion for a preliminary injunction be, and the same hereby is, denied.'

From this decree the plaintiffs appealed to this court, and in their assignments of error complain that the court erred in its various findings of fact and rulings of law above enumerated, including the dismissal of their bill for want of jurisdiction and the denial of their motion for preliminary injunction.

The case having been docketed here, the defendant filed a motion to dismiss the appeal for want of jurisdiction in this court to entertain the same; the court below having dismissed the bill for want of jurisdiction.

The appellate jurisdiction of Circuit Courts of Appeals and of the Supreme Court, so far as applicable to this case, is set forth in the Judicial Code, as follows:

'The Circuit Courts of Appeals shall exercise appellate jurisdiction to review by appeal or writ of error final decisions in the District Courts, * * * in all cases other than those in which appeals and writs of error may be taken direct to the Supreme Court, as provided in section two hundred and thirty-eight, unless otherwise provided by law. ' Section 128.

'Appeals and writs of error may be taken from the District Courts * * * direct to the Supreme Court in the following cases: In any case in which the jurisdiction of the court is in issue, in which case the question of jurisdiction alone shall be certified to the Supreme Court from the court below for decision. ' Section 238.

No contention is made but that the facts in this case present a question of 'jurisdiction' within the meaning of the statutes above quoted, and none reasonably could be in view of the decisions of the Supreme Court in considering a like state of facts involving the same question. Board of Trade of Chicago v. Hammond Elevator Co., 198 U.S.

424, 25 Sup.Ct. 740, 49 L.Ed. 1111; Kendall v. American Automatic Loom Co., 198 U.S. 477, 25 Sup.Ct. 768, 49 L.Ed. 1133; Remington v. Central Pacific R.R. Co., 198 U.S. 95 25 Sup.Ct. 577, 49 L.Ed. 959; Greene v. Chicago, Burlington & Quincy R.R. Co., 205 U.S. 530, 27 Sup.Ct. 595, 51 L.Ed. 916; International Harvester Co. v. Kentucky, 234 U.S. 579, 34 Sup.Ct. 944, 58 L.Ed. 1479; Tyler Co. v. Ludlow-Saylor Co., 236 U.S. 723, 35 Sup.Ct. 458, 59 L.Ed. 808; ...