Aralac, Inc. v. Hat Corporation
| Decision Date | 04 March 1946 |
| Docket Number | No. 532.,532. |
| Citation | 64 F. Supp. 696 |
| Parties | ARALAC, Inc., v. HAT CORPORATION OF AMERICA. |
| Court | U.S. District Court — District of Delaware |
Worthington Campbell and Mark N. Donohue (of Hoguet, Neary & Campbell), of New York City, and William S. Potter (of Southerland, Berl & Potter), of Wilmington, Del., for plaintiff.
Drury W. Cooper and Bertram F. Shipman, both of New York City, and Caleb S. Layton (of Richards, Layton & Finger), of Wilmington, Del., for defendant.
For the purposes of the motion to dismiss, the allegations of the complaint will be accepted.1 Hat manufacturers buy plaintiff's fibres for use in making fur felt hats. Statements attributable to defendant are that it has asserted to plaintiff's customers that defendant's patents encompass the use of casein fibres in such manufacture. For example, a certain letter charged one of plaintiff's largest customers — John B. Stetson Company — with infringement by its use of casein fibres. Stetson then brought suit for declaratory judgment relief with respect to the same patents now in suit. Later Stetson discontinued its action and entered into a license with defendant. Thereafter Stetson's purchases from plaintiff decreased. Another of plaintiff's customers wrote that rather than pay tribute to defendant it elected to cancel its order for fibres with plaintiff. As late as February, 1945, defendant circularized many of plaintiff's customers with a letter and a copy of a proposed license. One customer returned to plaintiff a quantity of fibres which it had previously purchased after receipt of defendant's letter. One customer stated that in view of defendant's assertion no further purchases would be made from plaintiff. Another customer advised that its use of plaintiff's casein fibres would be limited until the "patent situation is cleared up".
Defendant in support of its motion to dismiss states that as the inventions covered by its patents are not for casein fibres as such but cover a process for combining such fibres with fur fibres to make hat materials, no controversy can exist between the parties; and, in fact, it has never threatened plaintiff with infringement. Defendant argues that any charge of infringement under the patents here involved which has occurred has been against a product and a process and that plaintiff has no connection or control with either. In short, it is defendant's contention that if plaintiff's product, which is a standard article of commerce, were sold and used by one of plaintiff's customers in a process which would result (after combination with other materials) in a product which would infringe defendant's patents, nevertheless plaintiff itself could never be sued for infringement.
From this, it is argued that such manufacturer of an unpatented article, even though capable of being used in combination with other materials, which results in a process and a product covered by a patent, has no such legal interest in either validity or infringement, asserted by the patentee against a customer, so as to maintain an action for declaratory judgment relief.
Defendant's argument is not without force. The Declaratory Judgment Act created no new rights but simply gave an additional remedy for the determination of an already existing right. McCarty v. Hollis, 10 Cir., 120 F.2d 540, 542. Federal jurisdiction must exist in this case by virtue of a controversy arising under the patent laws,2 for there is no diversity of citizenship as both plaintiff and defendant are Delaware corporations. Where a person is not engaged in possible infringing conduct and with no intention of doing so, he lacks an interest in a controversy to support an action for declaratory judgment relief to test the validity of a patent. Dewey & Almy Chemical Co. v. American Anode, Inc., 3 Cir., 137 F.2d 68, 70; Zachs v. Aronson, D.C., 49 F.Supp. 696, 697. The two cases cited by plaintiff to support its position that it has an interest are inapposite. In Alfred Hofmann, Inc. v. Knitting Machines Corp., 3 Cir., 123 F.2d 458, and Girdler v. E. I. duPont de Nemours & Co., D.C.Del., 56 F.Supp. 871, the plaintiffs could have been sued as direct or contributory infringers — i.e., the machines sold by the plaintiff-manufacturers when used alone or in...
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Aralac, Inc. v. Hat Corporation of America
...the patent of another, may bring a declaratory judgment action, even where there is no diversity, to test the validity of the patent." 64 F.Supp. 696, 698. We realize the importance to the public generally that an invalid patent should not have the protection of the law. The power of the co......
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Wallace & Tiernan Inc. v. General Electric Company
...v. Sciaky Bros., Inc., 187 F.Supp. 667, 672, 674 (E.D.Mich.1960), aff'd, 304 F.2d 724 (6th Cir. 1962); Aralac, Inc. v. Hat Corporation of America, 64 F.Supp. 696, 698 (D.Del. 1946), aff'd, 166 F.2d 286 (3d Cir. 1948). Cf. Precision Instrument Manufacturing Co. v. Automotive Maintenance Mach......
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Magic Foam Sales Corp. v. Mystic Foam Corp.
...involved in the counterclaim in Derman v. Stor-Aid, supra, and in Wells v. Universal Pictures Co., supra. See also Aralac, Inc. v. Hat Corporation, D.C.Del., 64 F.Supp. 696. Administrative procedure was available to the appellant at the time this action was filed to have appellee's registra......
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National Coupling Co. v. Press Seal Gasket Corp., Civ. No. 1318.
...there exists no justiciable controversy between plaintiff and defendant. Defendant relies on the case of Aralac, Inc. v. Hat Corporation, (D.C.Delaware 1946) 64 F.Supp. 696, affirmed 3 Cir., 166 F.2d 286, as authority for its Defendant, by affidavit, says that the gaskets that plaintiff man......