Armstrong v. Langmuir

• Decision Date: 02 March 1925
• Docket Number: No. 237.,237.
• Citation: 6 F.2d 369
• Parties: ARMSTRONG et al. v. LANGMUIR et al.
• Court: U.S. Court of Appeals — Second Circuit

6 F.2d 369 (1925)

ARMSTRONG et al. v. LANGMUIR et al.

No. 237.

Circuit Court of Appeals, Second Circuit.

March 2, 1925.

Pennie, Davis, Marvin & Edmonds, of New York City (Thomas Ewing, Wm. H. Davis, and W. B. Morton, all of New York City, of counsel), for appellants Armstrong and Westinghouse Electric Mfg. Co. Darby & Darby, of New York City (Thomas G. Haight, of Jersey City, N. J., and Samuel E. Darby, Jr., of New York City, of counsel), for appellees De Forest and De Forest Radio Telephone & Telegraph Co.

Clifton V. Edwards, of New York City, for appellees Secretary of the Navy and Meissner.

Before HOUGH, MANTON, and HAND, Circuit Judges.

HAND, Circuit Judge.

The plaintiff filed a bill in equity under Rev. St. § 4915, (Comp. St. § 9460), to procure an adjudication that they were entitled to receive a patent, which they had been denied by proceedings in the Patent Office terminating in a decision by the Court of Appeals for the District of Columbia. They alleged that Armstrong was the inventor of an invention described in an application filed in the Office, which he had assigned to the Westinghouse Electric Manufacturing Company; that in the progress of that application through the Office his claim had been put into interference with the applications of the parties hereto, Langmuir, Meissner, and De Forest. Three claims were stated by the Commissioner of Patents as common to the applications, and these eventually were awarded to the defendant De Forest. Before that time De Forest had assigned his rights to the De Forest Company which in turn had executed certain instruments annexed to the bill conveying to the American Telephone & Telegraph Company an exclusive license in the invention. It further alleged that Meissner's application had been seized by the Alien Property Custodian, who had conveyed his interest in it to the Secretary of the Navy.

De Forest is a resident of New York and citizen of the United States; the De Forest Radio Telephone & Telegraph Company is a Delaware corporation; Meissner is a citizen of Austria, living in Berlin; the Secretary of the Navy is a resident of the District of Columbia; Langmuir is a citizen of the United States residing in New York; the General Electric Company is a New York Company, and so is the American Telephone & Telegraph Company. De Forest was properly served, as were the General Electric Company and the American Telephone & Telegraph Company. Langmuir and the General Electric Company have filed an answer, alleging that Langmuir was the first inventor of the claims in suit, and praying a declaration to that effect in this suit. On May 29, 1924, the District Court ordered a copy of the bill, accompanied by a copy of the order itself, to be served upon all parties to the interference, but this was for mere regularity under the statute.

De Forest appeared specially to dismiss the bill on the ground that he had no interest in the subject-matter, because he had assigned all interest to the De Forest Company. The De Forest Company appeared specially and moved to dismiss the bill as to it, because it was not subject to process of the District Court, and further moved to dismiss it as to all parties, because it was an indispensable party to the suit. Meissner and the Secretary of the Navy likewise appeared specially and moved to vacate the order for notice to adverse parties, because the De Forest Company was a necessary party and was not subject to the jurisdiction of the District Court, and because they could not be called upon to assert their rights in a case in which that company was not a party. For the same reasons they moved to dismiss the bill as to all the parties. The District Court granted the motion of the De Forest Company, Meissner, and the Secretary of the Navy, because they were not within its jurisdiction. In addition, it dismissed the bill against all the defendants, because the De Forest Company was an indispensable party. It dismissed the bill as to De Forest personally, because he had no interest in the suit. Armstrong, the Westinghouse Company, Langmuir, and the General Electric Company appeal, and so the case comes to us.

Assuming, as the plaintiffs wish us to do, that the suit is in personam, the De Forest Company was clearly right in its motion to dismiss as to itself. The appellants concede as much, but argue that by coupling with the motion to dismiss for lack of jurisdiction the motion to dismiss the bill as to all the defendants the company appeared generally. We think not. While of course we agree that a special appearance and motion to dismiss for lack of personal jurisdiction cannot be coupled with a motion upon the merits, it seems to us that the two motions here coupled do not fall within that rule. It is, for example, settled in at least three circuits that a party sued in the wrong district may couple a motion to dismiss on that ground with a motion to dismiss for lack of substantive jurisdiction over the subject-matter. Southern Pac. Co. v. Arlington Heights Co., 191 F. 101 (C. C. A. 9), 111 C. C. A. 581; Jones v. Gould, 149 F. 153 (C. C. A. 6), 80 C. C. A. 1; Kelley v. Smith, 196 F. 466 (C. C. A. 7), 116 C. C. A. 240. The decision to the contrary in Mahr v. Union Pacific Co. (C. C.) 140 F. 921, must be considered as overruled. It is true that the case at bar was not like those just cited. The De Forest Company in substance asserted that it could not be sued in the Southern district of New York, and since it could not that the whole suit must lapse, because it was an indispensable party. The second phase of this motion was not an alternative to the first, but dependent on its validity. If the first was not good, the second was not good. This in our judgment was free from the vice which makes any motion on the merits a general appearance. A man may not say that he is not properly before the court, and in the same breath argue that, if he be, there is no ground to hold him. Courts...