Brunette Machine Works, Ltd v. Kockum Industries, Inc 8212 314

• Decision Date: 07 June 1972
• Docket Number: No. 70,70
• Citation: 32 L.Ed.2d 428,92 S.Ct. 1936,406 U.S. 706
• Parties: BRUNETTE MACHINE WORKS, LTD., Petitioner, v. KOCKUM INDUSTRIES, INC. —314
• Court: U.S. Supreme Court

406 U.S. 706

92 S.Ct. 1936

32 L.Ed.2d 428

BRUNETTE MACHINE WORKS, LTD., Petitioner,

v KOCKUM INDUSTRIES, INC.

No. 70—314.

Argued March 23, 1972.

Decided June 7, 1972.

Syllabus

Title 28 U.S.C. § 1391(d), providing that '(a)n alien may be sued in any district,' embodies the long-established rule that a suit against an alien is wholly outside the operation of all federal venue laws (whether general or special) and governs the venue of an action for patent infringement against an alien. The District Court therefore erred in holding that § 1400(b) (which provides that a patent infringement suit may be brought in the district of the defendant's residence, or where he has committed infringement acts and has a regular place of business) is the exclusive provision governing venue in patent infringement litigation. Pp. 708—714.

442 F.2d 420, affirmed.

J. Pierre Kolisch, Portland, Or., for petitioner.

Harry M. Cross, Jr., Seattle, Wash., for respondent.

Mr. Justice MARSHALL delivered the opinion of the Court.

Section 1391(d) of the United States Judicial Code provides that '(a)n alien may be sued in any district.' Section 1400(b) provides that '(a)ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.' We are asked to decide which provision of Title 28 governs the venue of an action for patent infringement against an alien defendant.

Respondent Kockum Industries, Inc., an Alabama corporation doing business in Oregon, holds a United States patent on a machine that removes bark from logs. Kockum claims that petitioner Brunette Machine Works, Ltd., a Canadian corporation, has infringed that patent by assisting two American manufacturers to make and sell similar machines.¹ Kockum obtained service of process on Brunette in Oregon, under that State's long-arm statute, Ore.Rev.Stat. § 14.035, and filed this action for patent infringement in the United States District Court for the District of Oregon. The District Court dismissed the complaint on the ground of improper venue, accepting Brunette's contention that § 1400(b) is the exclusive provision governing venue in patent infringement litigation, and that its requirements were not satisfied here.² The Court of Appeals reversed, holding that § 1391(d) applies to patent infringement suits as to all others, and hence that Brunette is subject to suit as an alien in any district. 442 F.2d 420 (1971) We granted certiorari to resolve a conflict in the circuits on this question.³ 404 U.S. 982, 92 S.Ct. 444, 30 L.Ed.2d 366 (1971). We affirm.

I

Section 1391(d), providing that an alien may be sued in any district, appeared for the first time in the Judicial Code of 1948, but its roots go back to the beginning of the Republic. The first restrictions on venue in the federal courts were set forth in the Judiciary Act of 1789:

'(N)o civil suit shall be brought before either (district of circuit) courts against an inhabitant of the United States, by any original process in any other district than that whereof he is an inhabitant, or in which he shall be found at the time of serving the writ. . . .' 1 Stat. 79.⁴

Because this limitation on the place where federal cases might be tried applied in terms only to suits against 'an inhabitant of the United States,' suits against aliens were left unrestricted, and could be tried in any district, subject only to the requirements of service of process.

The original venue provisions remained essentially unchanged until 1875 when Congress substantially revised the Judiciary Act and greatly expanded the scope of federal jurisdiction. 18 Stat. 470.⁵ In describing the class of cases subject to venue restrictions, the 1875 statute dropped the phrase 'suit . . . against an inhabitant of the United States' and substituted 'suit . . . against any person.' This Court held, however, that the change was stylistic and not substantive, and that Congress did not thereby bring suits against aliens within the scope of the venue laws. In re Hohorst, 150 U.S. 653, 14 S.Ct. 221, 37 L.Ed. 1211 (1893).

The Court offered two reasons in Hohorst for concluding that suits against aliens remained outside the scope of the venue laws. First, no contemporary significance appears to have attached to the relevant change in language in 1875.⁶ Second, and perhaps more important, to hold the venue statutes applicable to suits against aliens would be in effect to oust the federal courts of jurisdiction in most cases, because the general venue provisions were framed with reference to the defendant's place of residence or citizenship, and an alien defendant is by definition a citizen of no district.⁷ The Hohorst Court reasoned that it should not lightly be assumed that Congress intended that result, in light of the fact that the venue provisions are designed, not to keep suits out of the federal courts, but merely to allocate suits to the most appropriate or convenient federal forum.⁸

The reasoning of Hohorst with respect to suits against aliens continues to have force today. It remains true today that to hold the venue statutes applicable here would in effect oust the federal courts of a jurisdiction clearly conferred on them by Congress. Moreover, in the 79 years since Hohorst was decided, Congress has never given the slightest indication that it is dissatisfied with the longstanding judicial view that the 1789 language continues to color the venue statutes, with the result that suits against aliens are outside the scope of all the venue laws.

II

Petitioner argues that by enacting 28 U.S.C. § 1400(b), Congress indicated a legislative intent to reject that rule in patent cases, and regulate the venue of suits against aliens in that limited class of cases. There is support for petitioner's argument in the broad language of prior decisions of this Court. Twice before, the Court has refused to apply venue provisions of general applicability to patent infringement cases. In Stonite Prods. Co. v. Melvin Lloyd Co., 315 U.S. 561, 62 S.Ct. 780, 86 L.Ed. 1026 (1942), the Court declared that what is now § 1400(b) is 'the exclusive provision controlling venue in patent infringement proceedings.' Id., at 563, 62 S.Ct., at 781. Stonite held that venue in patent cases is not affected by what is now § 1392(a), which relaxes certain restrictive venue rules in cases involving multiple defendants. ⁹ Similarly, in Fourco Glass Co. v. Transmirra Prods. Corp., 353 U.S. 222, 77 S.Ct. 787, 1 L.Ed.2d 786 (1957), the Court asserted that '28 U.S.C. § 1400(b) is the sole and exclusive provision controlling venue in patent infringement actions,' emphasizing its character as 'a special venue statute applicable, specifically, to all defendants in a particular type of action,' id., at 228, 229, 77 S.Ct., at 792 (emphasis in original). Fourco held that venue in patent cases is not affected by § 1391(c), which expands for general venue purposes the definition of the residence of a corporation.¹⁰

The analysis in each case rested heavily on the legislative history of § 1400(b). Prior to 1893, patent infringement cases had been widely, though not universally, regarded as subject to the general federal venue statutes. Chaffee v. Hayward, 20 How. 208, 215—216, 15 L.Ed. 804, 851 (1858). This Court cast doubt on that proposition, however, in the Hohorst case, supra. We have already noted that Hohorst held the general venue limitations inapplicable to a suit against an alien defendant.¹¹ In further support of the decision, however, the Court noted that the suit was based on a claim for patent infringement; the venue restrictions, said the Court, were intended to apply only to that part of the federal jurisdiction that was concurrent with state court jurisdiction, and not to patent suits, which are entrusted exclusively to the federal courts.

The apparent effect of the decision was to hold that patent infringement suits could be tried in any district, even when the defendant was not an alien. After Hohorst, there was great confusion on this point in the lower courts. ¹² Congress responded promptly, creating a special new venue statute for the occasion: patent infringement claims were to be heard only in the district where the defendant was an inhabitant, or the district where he committed acts of infringement and also maintained a regular and established place of business. 29 Stat. 695 (1897), now codified as 28 U.S.C. § 1400(b). The new provision was of course more restrictive than the law as it was left by Hohorst, but it was rather less restrictive than the general venue provision then applicable to claims arising under federal law.¹³ Over the objections of some legislators, who could see no reason for treating patent suits differently from any other federal-question litigation,¹⁴ Congress took the opportunity to establish for patent infringement suits a special and separate venue statute. Thus it is fair to say, as the Court did in Stonite and Fourco, that in 1897 Congress placed patent infringement cases in a class by themselves, outside the scope of general venue legislation.

But that analysis sheds no light on the present case. For it totally misconceives the origin and purpose of § 1391(d) to characterize that statute as an appendage to the general venue statutes, analogous to the provisions at issue in Stonite and Fourco. Section 1391(d) is not derived from the general venue statutes that § 1400(b) was intended to replace. Section 1391(d) reflects, rather, the longstanding rule that suits against alien defendants are outside those statutes. Since the general venue statutes did not reach suits against alien defendants, there is no reason to suppose the new substitute in patent cases was intended to do so. Indeed, the only glimmer of evidence of legislative intent points in the other direction. We have no reliable indication of what Con...