Armstrong v. Allen B. Du Mont Laboratories, Civ. A. No. 1580.

• Decision Date: 16 December 1955
• Docket Number: Civ. A. No. 1580.
• Parties: Edwin H. ARMSTRONG, Plaintiff, v. ALLEN B. DU MONT LABORATORIES, Inc., Defendant.
• Court: U.S. District Court — District of Delaware

137 F. Supp. 659

Edwin H. ARMSTRONG, Plaintiff, v. ALLEN B. DU MONT LABORATORIES, Inc., Defendant.

Civ. A. No. 1580.

United States District Court D. Delaware.

December 16, 1955.

William Prickett, Wilmington, Del., Alfred McCormack (of Cravath, Swaine & Moore), New York City, Robert W. Byerly (of Byerly, Townsend & Watson), New York City, and Dana M. Raymond, New York City, for plaintiff.

David F. Anderson (of Berl, Potter & Anderson), Wilmington, Del., Floyd H. Crews and Russell G. Pelton (of Darby & Darby), New York City, for defendant.

RODNEY, District Judge.

This action was instituted by Edwin H. Armstrong on December 13, 1953. Jurisdiction is alleged under the Patent Laws of the United States. The complaint was for injunctive process and for damages for past infringement and alleged that Armstrong was the patentee and sole owner of six patents as follows: No. 1,941,066 issued Dec. 26, 1933 (expired Dec. 26, 1950); No. 1,941,068 issued Dec. 26, 1933 (expired Dec. 26, 1950); No. 1,941,069 issued Dec. 26, 1933 (expired Dec. 26, 1950); No. 2,098,698 issued Nov. 9, 1937 (expired Nov. 9, 1954); No. 2,215,284 issued Sept. 17, 1940 — Reissued Dec. 17, 1940 as Reissue 21,660; No. 2,290,159 issued July 21, 1942.

It will be noted that the first three patents '066, '068 and '069 had expired prior to suit. As to them the complaint sought damages for prior infringement. As to the remaining three patents, still in force when suit was brought, the complaint sought injunctive relief against further infringement and damages for past infringement.

Edwin H. Armstrong died February 1, 1954, and Esther Marion Armstrong became the executrix of his will, and by virtue of 35 U.S.C. § 261 the patents had the attributes of personal property.

It will also be noted that Patent 2,098,698 expired November 9, 1954 after the suit was brought and after the death of Edwin H. Armstrong.

On March 29, 1955, Esther Marion Armstrong, as executrix of Edwin H. Armstrong, moved under Rule 25(a) to be substituted as party plaintiff.

The motion for substitution is objected to and the grounds of objection differ as to two categories of the patents.

As to the three patents '066, '068 and '069 which had expired before suit was instituted and as to which the claim was solely for past infringement, the objection is that the cause of action did not survive the death of the patentee and no right of substitution of the executrix exists:

(a) Because the action was for a tort which was extinguished,

(b) Because the action was to recover a penalty which was extinguished,

(c) Because the action was for past infringement which was extinguished.

As to the three remaining patents, in force at the time suit was brought, it is conceded that the rights of the executrix became operative and a cause of action exists or existed for injunctive relief and for infringement during the ownership of the executrix, but it is contended that any remedy for past infringement (in the lifetime of the patentee) is subject to the objections as to the first three mentioned patents.

I shall first consider the right of the executrix to be substituted as to the patents that had expired before institution of suit for if the executrix is entitled to such substitution other questions become unimportant. I shall consider the objections in the order given.

Preliminarily, however, and before considering the survivability of the action, I must consider by what law such survivancy shall be determined.¹

It seems clear that the whole subject of patents and actions for their infringement is created by Act of Congress. This being true, it is equally clear that questions concerning the survivability of a cause of action given by the Federal statute are not to be determined by state law.²

There is no general Federal statute of survival and no statute governing survival of an action for patent infringement. Does this mean that where an action is given by Act of Congress and the Act gives no specific right of survival that such survival cannot exist? The defendant so contends at least insofar as patent infringement is concerned. The defendant strongly relies upon Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24, 43 S.Ct. 254, 67 L. Ed. 516. There the Court considered the peculiar nature of patent property as being solely a creature of statutory law and held that in the assignment of these statutory rights it was not safe to follow the common law rules governing the transfer of rights of an ordinary chose in action. There the Court considered only the assignment of a claim for infringement as separate and distinct from any interest in a live and unexpired patent under which the claim of infringement originated. The Court determined that the attempted assignment carried no title or interest in the patent and, therefore, created no right to sue for infringement. It also determined who were the proper parties to sue for past infringement of that live and unexpired patent. The Court was not concerned with any questions of the application of the common law to questions of survivability of a cause of action or of any matters connected with rights concerning an expired patent. A number of cases have held that where a right is given by a Federal statute, the question of its survivability is to be determined by an interpretation of the statute in the light of the common law.³ Among these are cases considering the survivability of actions under the Sherman Anti-Trust Law, 15 U.S.C.A. §§ 1-7, 15 note, and a right of action under that Act seems as peculiarly of statutory origin and subject to the same considerations as actions under the patent laws.

The defendant contends that an action for damages for infringement of a patent is an action of tort recoverable in an action ex delicto and that the general rule is that such rights of action do not survive. While it is true that the authorities in general terms say that an action of tort does not survive the death of the person entitled to enforce such action, yet the authorities are entirely uniform in holding that whether an action or cause of action survives depends on the substance of the cause of action and not on the form of proceedings to enforce it.⁴ In Patton v. Brady, 184 U.S. 608, at page 615, 22 S.Ct. 493, at page 495, 46 L.Ed. 713, the Court quoted the following language with approval:

"`In determining whether a cause of action survives to the personal representative, the real nature of the injury or claim ought to be regarded, and not the form of the remedy by which it is sought to be redressed or enforced.'"

We can assume that at early common law and pursuant to the maxim "actio personalis moritur cum persona" causes of action in tort died with the person entitled to such right. At an early date⁵ there was passed in 4 William III the Statute "De Bonis Asportatis" whereby certain rights of action survived.⁶ This Statute has always received a most liberal construction and with the common law was adopted as the common law in the American Colonies.⁷

The common law as to survivability of actions has not remained static since 1330 but as shown in Barnes Coal Corporation v. Retail Coal Merchants Ass'n⁸ "its rules arise from the application of reason to the changing conditions of society". As said in Hurtado v. People of State of California,⁹ "Flexibility and capacity for growth and adaptation is the peculiar boast and excellence of the common law."

It has grown to be the established law that the right of action in all personal actions does not die with the person but the true test is whether the injury upon which the cause of action is based is one which affected property rights or affected the person alone. In the former case, the action survives while in the latter, it does not. This is the rule in England and in America.¹⁰

The rationality of the distinction seems to be clear. The reason for redressing purely personal wrongs ceases to exist when either the person injured cannot be benefited by a recovery or the person inflicting the injury cannot be punished, whereas since the property or estate of the injured person passes to his personal representatives, a cause of action for an injury done to these property rights can achieve its purpose as well after the death of the original owner of the right of action as before.¹¹

And so we see from the great weight of authority that a cause of action, even though remediable in tort, which does not affect the person in any way but which does directly affect property rights does not die with the person entitled to such cause of action but survives to that person charged with administering the personal estate of the deceased. The application of the foregoing to this case is syllogistic. It is clear that a patent issued by authority is a valuable property right; an infringement of a patent is an injury to property; an injury to a property right and unconnected with any personal injury survives the death of the party entitled. And so I feel that an action to recover damages for infringement, brought by the person entitled thereto, survives to the personal representative, unless some other principle prevents such survival.

Courts of Equity have not considered themselves as bound by the same rules as to survivability as some courts of law although no sufficient reasons for the distinction seem to exist. Thus, actions brought in equity to enjoin current or future infringements are held to survive. This survival, based upon the equitable injunctive process, includes claims for past infringement.¹² In Root v. Railway Co., 105 U.S. 189, 26 L.Ed. 975, a suit in equity for past infringement after the patent had expired was held not maintainable because there was no distinctive equitable jurisdiction and that an adequate remedy at law existed. In Oakey & Sons v. Dalton (1887) L.R. Ch.Div., Vol. 35, p. 700, Oakey owning a trademark brought suit for injunctive process and for past...