Barkeij v. Don Lee, Inc., 937-M Civ.

• Decision Date: 21 August 1940
• Docket Number: No. 937-M Civ.,937-M Civ.
• Parties: BARKEIJ v. DON LEE, Inc., et al.
• Court: U.S. District Court — Southern District of California

34 F. Supp. 874

BARKEIJ v. DON LEE, Inc., et al.

No. 937-M Civ.

District Court, S. D. California, Central Division.

August 21, 1940.

Alan Franklin, of Los Angeles, Cal., for plaintiff and third-party defendant.

Flint & Mackay and Wesley L. Nutten, Jr., all of Los Angeles, Cal., for defendants and third-party plaintiff.

McCORMICK, District Judge.

One F. A. H. Barkeij, an alien and resident of the Dutch East Indies, as assignee of patent No. 2,199,276, issued April 30, 1940, sues Don Lee, Inc., and General Motors Corporation for the infringement of the patent. The defendants have denied infringement and have asserted other defenses as well by answer. They have also counterclaimed, seeking affirmative relief upon various grounds, among which are the claim that F. A. H. Barkeij is not the real party in interest, and also charges of conspiracy between plaintiff and his assignor, who is also his brother, to defeat license rights which are asserted to have vested in defendants through a license agreement between plaintiff's assignor Jean A. H. Barkeij and defendant General Motors Corporation.

Under Rule 14, Rules of Civil Procedure for District Courts, 28 U.S.C.A. following section 723c, upon ex parte application, defendants filed a third party complaint in which plaintiff's assignor, a resident of Pasadena, California, is made defendant. Process has issued upon such complaint and the third party defendant has duly filed, presented and submitted a motion to dismiss the third party complaint upon the grounds (1) that the said third party complaint fails to state a claim upon which relief can be granted, and (2) lack of jurisdiction over the subject matter. It is conceded that no diversity of citizenship and residence exists between the defendants and the third party defendant.

From close study of the pleadings it is clear that one of the main issues under the initial complaint, answer and counterclaim, is the effect upon the patent in suit of the license agreement of February 25, 1937, between plaintiff's brother and assignor, Jean A. H. Barkeij, and defendant General Motors Corporation. Profert of this agreement is made by defendants and a copy of the agreement is made a part of the answer and counterclaim.

The patent in suit is for "intake manifolds for internal combustion engines." Jean A. H. Barkeij, the inventor, has been an extensive worker in this art and has obtained prior patents in this mechanical field.

In the patent it is stated: "The present application is a continuation in part of my application No. 632,006 of Sept. 7, 1932, and of my application No. 702,970 of Dec. 18, 1933."

The license agreement between the initial plaintiff's assignor and defendant General Motors Corporation, for the consideration of $5,500, expressly grants to such defendant the paid-up, irrevocable right "to make or to have made for it on or for General Motors Corporation products, and to use and to sell on or for General Motors Corporation products, intake manifolds or gas distributing systems for internal combustion engines embodying the inventions disclosed in" certain of the patents and applications of Jean A. H. Barkeij of which the patent in suit expressly states it is to be a continuation.

There appears in the agreement the further grant and warranty by Jean A. H. Barkeij, the third party defendant, as follows: "The consideration above referred to is also accepted by me as payment in full for all liability of said General Motors Corporation, or demands by me against said Corporation by reason of the manufacture, use or sale prior to the date hereof of intake manifolds or gas distribution systems for internal combustion engines, it being the intent of this instrument to free said General Motors Corporation from any further liability for royalties or other payments for manufacture, use or sale, past or future, of intake manifolds or gas distribution systems embodying any invention covered by any patent, U. S. or foreign, that has issued or may hereafter issue provided such invention is disclosed in a U. S. patent application filed by me prior to the date hereof. It is understood specifically that I do not hereby grant any rights...