Automotive Equipment v. Trico Products Corporation, 1965.

• Decision Date: 23 May 1935
• Docket Number: No. 1965.,1965.
• Citation: 11 F. Supp. 292
• Parties: AUTOMOTIVE EQUIPMENT, Inc., v. TRICO PRODUCTS CORPORATION.
• Court: U.S. District Court — Western District of New York

11 F. Supp. 292

AUTOMOTIVE EQUIPMENT, Inc., v. TRICO PRODUCTS CORPORATION.

No. 1965.

District Court, W. D. New York.

May 23, 1935.

Harold I. Popp, of Buffalo, N. Y., and Dean, Fairbank, Hirsch & Foster and Franklin J. Foster, all of New York City, for petitioner.

Bean, Brooks, Buckley & Bean, Edwin T. Bean, and Richard W. Treverton, all of Buffalo, N. Y., for respondent.

KNIGHT, District Judge.

The petitioner herein moves to restrain certain customer suits brought by the respondent, and the respondent moves to dismiss petitioner's petition for declaratory judgment. Petitioner is the manufacturer of suction operated windshield wipers for use on automobiles under the trade-mark "Motocrat." Respondent manufactures a suction operated windshield wiper utilized for the same purpose under the trade-mark "Trico," and claims title to various patents covering such wiper.

On February 8, 1935, petitioner herein filed in the Southern District of New York a petition for a declaratory judgment under the provisions of the Federal Declaratory Judgment Act, enacted June 14, 1934, being section 274d of the Judicial Code, 28 USC § 400 (28 USCA § 400). The question of jurisdiction was raised by this respondent, and the petition was dismissed for lack of jurisdiction. 10 F. Supp. 736. On March 5, 1935, Trico Products Corporation, Inc., filed patent infringement suits against the Montgomery Ward & Co., Inc. and against the Western Auto Supply Company in this Western District of New York. On April 2, 1935, the petition herein for declaratory judgment was filed in this district.

Much has been said in the briefs herein relative to communications and transactions between the parties hereto in the attempt on the part of each to charge and show bad faith. As the court views these charges, they do not have any effect on the decision at which it arrives.

In effect, the petition for a declaratory judgment asks a judgment declaring that petitioner's windshield wipers and motors do not infringe certain patents of the respondent. The first question to be determined is whether this court has jurisdiction in a proceeding for a declaratory judgment where the validity of patents is sought to be declared. The Declaratory Judgment Act (Jud. Code § 274d, 28 US CA § 400) provides: "In cases of actual controversy the courts of the United States shall have power upon petition * * * to declare rights. * * *" The federal District Court has jurisdiction of "all suits at law or in equity arising under the patent, the copyright, and the trade-mark laws." Judicial Code § 24 (7), 28 USC § 41 (7), 28 USCA § 41(7). As pointed out by Judge Patterson in Zenie Bros. v. Herbert L. Miskend et al. (D. C.) 10 F. Supp. 779 (a suit for declaratory judgment), there are five specific actions arising under the patent laws cognizable in the federal courts. With the exception of suits in equity brought by the United States to cancel a patent, all of such actions are statutory. 35 USC §§ 63, 66, 67, and 70 (35 USCA §§ 63, 66, 67, 70). Patent suits are not excepted in the Declaratory Judgment Act. There appears to be no sufficient reason why such an exception should be made. It seems to me that this court has jurisdiction under the Declaratory Judgment Act in a suit involving rights to a patent or patents.

It is difficult to define precisely the full purposes served or intended by the Declaratory Judgment Act. An actual controversy must exist. The act is not exclusive. It affords an alternative remedy. It provides a remedy in certain controversies where no other is available. Borchard on Declaratory Judgments, p. 147 et seq. In this suit another remedy is available.

The petitioner for declaratory judgment contends that this suit has been pending since the filing of the petition in the Southern District Court. This contention cannot be sustained. The petition filed therein was dismissed. This suit is dependent upon a new petition filed in this district.

Before the petition in suit was filed, respondent brought actions against sellers of petitioner's windshield wipers on account of alleged infringement of fourteen patents, for an accounting, and for damages arising therefrom. The issues in the infringement suit and the suit for declaratory judgment are the same, except as to the claim for damages. Something is said in the affidavits submitted regarding some claim made by respondent to rights under many patents. The petition for a declaratory judgment contains no such declaration. No actual controversy as to any except fourteen patents is shown or alleged. The same patents are recited in the petition as in the actions for infringement. The prayer in the petition asking that the petitioner have the right to manufacture and sell its product without molestation does not enlarge the issue set forth in the petition.

No diversity of citizenship is involved. No claim of unfair competition concededly could be made under the petition for a declaratory judgment. It is likewise true that respondent's claim arising out of unfair competition could not be asserted as a basis for affirmative relief in the actions against the sellers. In any event, however, all the issues available in the Declaratory Judgment Act may be available in the infringement suits. They are available to the petitioner herein, provided it intervenes in these customer actions. Respondent conceded the right of petitioner to intervene. There is little doubt that the court would exercise its discretion in permitting intervention under Equity Rule 37, 28 USCA following section 723. Foote v. Parsons Non-Skid Co. (C. C. A.) 196 F. 951; Wenborne-Karpen Dryer Co. v. Dort Motor...