Bellavance v. Plastic-Craft Novelty Co.

• Decision Date: 06 November 1939
• Docket Number: No. 156.,156.
• Parties: BELLAVANCE v. PLASTIC-CRAFT NOVELTY CO. et al.
• Court: U.S. District Court — District of Massachusetts

30 F. Supp. 37

BELLAVANCE v. PLASTIC-CRAFT NOVELTY CO. et al.

No. 156.

District Court, D. Massachusetts.

November 6, 1939.

George P. Dike, Cedric W. Porter, George P. Towle, Jr., and Dike, Calver & Gray, all of Boston, Mass., for plaintiff.

Richard F. Walker and Roberts, Cushman & Woodberry, all of Boston, Mass., for defendants.

BREWSTER, District Judge.

This is a complaint alleging infringement of Letters Patent of the United States. Plaintiff has demanded a trial by jury. Defendant has moved to strike the action from the calendar of cases for jury trial and to transfer it to the calendar of cases for court trial.

Rule 39 of Rules of Civil Procedure, 28 U.S.C.A. following section 723c, provides that: "When trial by jury has been demanded as provided in Rule 38, the action shall be designated upon the docket as a jury action. The trial of all issues so demanded shall be by jury, unless * * (2) the court upon motion or of its own initiative finds that a right of trial by jury of some or all of those issues does not exist under the Constitution or statutes of the United States."

The Seventh Amendment to the Constitution, U.S.C.A., preserves the right of trial by jury in suits at common law only and the question presented is whether the plaintiff, by virtue of this constitutional amendment and the Rules of Civil Procedure, has a right to a trial by jury.

The remedies open to one for the infringement of a patent are wholly statutory. The statutes afford two remedies — first, an action on the case to recover damages for infringement of the patent, R.S. § 4919, 35 U.S.C.A. § 67. Such an action, of course, is one at law and would entitle the parties to a jury trial. The other remedy is by proceeding under R.S. § 4921, 35 U.S.C.A. § 70, which gives the court "power to grant injunctions according to the course and principles of courts of equity, to prevent the violation of any right secured by patent * * *."

In proceedings under this latter statute the complainant may ask for damages already sustained, as well as for injunctive relief. Clearly, it is under this second statute that the plaintiff has proceeded. It has long been settled law that where suit is brought under the statute providing equitable relief, the fact that the plaintiff also seeks damages for past infringement will not entitle the plaintiff to a jury trial on the issue of damages. Barton v. Barbour, 104 U.S. 126, 133, 26 L.Ed. 672.

In this case the Court observed: "Thus, upon a bill filed for an injunction, to restrain the infringement of letters-patent, and for an account of profits for past infringement, it is now the constant practice of courts of equity to try without a jury issues of fact relating to the title of the patentee, involving questions of the novelty, utility, prior public use, abandonment, and assignment of the invention patented. The jurisdiction of a court of equity to try such issues according to its own course of practice is too well settled to be shaken. Providence Rubber Company v. Goodyear, 9 Wall. 788 19 L.Ed. 566; Cawood Patent, 94 U.S. 695 24 L.Ed. 238; Marsh v. Seymour, 97 U.S. 348 24 L.Ed. 963."

It has recently been said that the Seventh Amendment has no application to cases where the recovery of money damages is an incident to equitable relief even though damages might have been recovered in an action at law. National Labor Relations Board v. Jones & Laughlin Steel Corp., 301 U.S. 1, 48, 57 S.Ct. 615, 81 L.Ed. 893, 108 A.L.R. 1352.

See also — Cogswell v. New York, New Haven & Hartford Ry. Co., 105 N.Y. 319, 11 N.E....