Brownell v. Schering Corporation, Civ. A. No. 1168-52.

• Decision Date: 21 November 1956
• Docket Number: Civ. A. No. 1168-52.
• Citation: 146 F. Supp. 106
• Parties: Herbert BROWNELL, Jr., Attorney General of the United States, as Successor to the Alien Property Custodian, Plaintiff, v. SCHERING CORPORATION, Defendant.
• Court: U.S. District Court — District of New Jersey

146 F. Supp. 106

Herbert BROWNELL, Jr., Attorney General of the United States, as Successor to the Alien Property Custodian, Plaintiff, v. SCHERING CORPORATION, Defendant.

Civ. A. No. 1168-52.

United States District Court D. New Jersey.

November 21, 1956.

David Schwartz, Washington, D. C., for plaintiff.

Anthony T. Augelli, Jersey City, N. J., for defendant.

Montrose H. Massler, Theodore R. Kupferman, New York City, for Hexagon Laboratories, Inc., amicus curiae.

HARTSHORNE, District Judge.

Defendant Schering Corporation moves this Court to construe its final order and decree herein, Brownell v. Schering, D.C.N.J.1955, 129 F.Supp. 879, affirmed 3 Cir., 1956, 228 F.2d 624, certiorari denied 1956, 351 U.S. 954, 76 S.Ct. 849, by advising of the meaning of the word "qualified", as it appears in paragraph 1(e) of such decree, requiring Schering "to negotiate in good faith with applicants for licenses under Article VI of the Agreement, and to make offers to and to issue licenses to qualified applicants". More specifically Schering asks this Court to determine that Hexagon Laboratories, Inc. is not such a "qualified" applicant, by reason of its letter agreement with Schering of March 29, 1954.

The situation in brief is, that prior to 1952 Schering and its corporate stock had been the property of German citizens, its property having accordingly been vested by, and in, the Director of the Office of Alien Property, commonly known as the Alien Property Custodian. In January 1952 the Alien Property Custodian accordingly issued a directive to Schering, requiring it to enter into an agreement with the Alien Property Custodian and to comply with such agreement. This agreement recited that the Schering patent in question here, together with a series of other Schering patents, was to "be made available by Schering for licensing to qualified applicants on a nondiscriminatory, non-exclusive, reasonable royalty basis." In Article VI of the agreement, Schering expressly "agrees to grant to any applicant, upon written request therefor, a non-exclusive license, for manufacture in the United States to make, use and sell under" such patent, as well as under other patents. The agreement further provides, in Article VII, Definitions:

"(C) As used in Article VI of this Agreement, the word `applicant' includes any citizen of, and any corporation, partnership, association, or business organization of any kind or nature which now or hereafter is organized under the laws of, the United States, its several states, territories, or possessions, or any country which is signatory to the London Patent Accord of July 27, 1946, as amended; provided, that the word `applicant' shall not be deemed to include any applicant for a license if, subsequent to the date of this Agreement, such applicant obtained from Schering a license under the same Patent or Patents and such license was cancelled by Schering in accordance with its terms."

The Directive also referred to "qualified applicants" for patent licenses. Such being the only restrictions in such agreement, as to who should be applicants for a license as to the patent in question and other similar patents, clearly those coming within the terms of the above definitions were "qualified" applicants within the meaning of such agreement and directive.

Shortly thereafter, the Alien Property Custodian filed its complaint in this Court against Schering, alleging that it had refused to comply with the...