C. Van Der Lely NV v. F. lli Maschio Snc

• Decision Date: 20 April 1982
• Docket Number: No. C-2-78-565.,C-2-78-565.
• Citation: 561 F. Supp. 16
• Parties: C. VAN DER LELY N.V., Plaintiff, v. F.lli MASCHIO S.n.c., et al., Defendants.
• Court: U.S. District Court — Southern District of Ohio

561 F. Supp. 16

C. VAN DER LELY N.V., Plaintiff, v. F.lli MASCHIO S.n.c., et al., Defendants.

No. C-2-78-565.

United States District Court, S.D. Ohio, E.D.

April 20, 1982.

Charles C. Warner, Porter, Wright, Morris & Arthur, Columbus, Ohio, Kenneth E. Payne, Finnegan, Henderson, Farabow & Garret, Washington, D.C., for plaintiff.

Robert E. Stebens, Mahoney & Stebens, Columbus, Ohio, for defendants.

MEMORANDUM AND ORDER

HOLSCHUH, District Judge.

Plaintiff, C. Van Der Lely N.V., originally brought this action alleging that defendant, F.lli Maschio S.n.c., had infringed eight of the plaintiff's patents. Defendant denied any infringement and counterclaimed seeking a declaratory judgment that each of the plaintiff's patents set forth in the complaint is invalid. The jurisdiction of the Court is invoked under 28 U.S.C. § 1338(a) and 28 U.S.C. §§ 2201 and 2202.

This case is now before the Court on the plaintiff's motion to amend the pleadings and to dismiss certain claims and counterclaims. Specifically, plaintiff seeks to amend its complaint pursuant to Fed.R. Civ.P. 15(a) in order to dismiss, with prejudice, all claims that defendant has infringed U.S. Patent Nos. 3,841,411; 3,899,030; 3,809,166, and 3,939,918,¹ because discovery has disclosed that the defendant is not now infringing these patents and has no future intention to manufacture, use or sell machines which infringe these patents. Plaintiff also seeks to have the defendant's counterclaims relating to these particular patents dismissed, without prejudice, because there is presently no controversy involving these patents.

I. DISCUSSION

A. FACTUAL BACKGROUND OF PLAINTIFF'S MOTION

On June 16, 1978, plaintiff, C. Van Der Lely N.V. (hereinafter "Lely"), a Holland corporation engaged in the manufacture and sale of vertical rotary harrows, filed its complaint in this Court against F.lli Maschio S.n.c. (hereinafter "Maschio"), an Italian corporation,² claiming that Maschio's sale of its harrows in the United States infringed eight of Lely's patents.³ On September 27, 1978, Maschio filed its Answer and Counterclaim, denying any infringement and seeking by its counterclaim a declaratory judgment that each of plaintiff's eight patents is invalid and unenforceable. On October 16, 1978, Lely filed its reply to the counterclaim, asserting the validity of each of the patents and reasserting its claim that each of the eight patents had been infringed by Maschio.

There is no dispute that this case involves only three of Maschio's models of its harrows, Model T, Model HB and Model HM, which Maschio has sold in the United States. There is also no dispute that Lely, at the time its complaint was filed, believed that Maschio was manufacturing and selling all three models in the United States, but subsequently learned through the course of discovery that the Model T is no longer available in the United States. Furthermore, Lely concluded from its discovery that the Maschio HB and HM models do not infringe four of the eight patents referred to in Lely's original complaint. (Defendant's statement of facts in its memorandum contra plaintiff's motion to amend.) According to Lely, and not disputed by Maschio, only a limited number of Maschio's Model T harrows were ever distributed in the United States, and Maschio "no longer manufactures the Model T machine, is not now selling or offering to sell Model T machines, and has no intention to manufacture, use or sell a Model T-type machine in the future." (Plaintiff's memorandum in support of its motion to amend at 2.) With respect to the Models HB and HM, Lely concluded that these models do not infringe four of the eight patents and that "plaintiff has no reason to believe that Maschio has any intention to alter the design of the HB and HM models to a design that would infringe the '411, '030, '166 or '918 patents or to design, manufacture, use or sell any machines which would infringe the '411, '030, '166 or '918 patents." (Plaintiff's memorandum, supra at 2.)

As a result of the information obtained and conclusions reached following discovery, Lely proposed to Maschio in November, 1979 that the parties agree that Lely could file an amended complaint, eliminating its claims based on the four patents referred to above, and that Maschio would file an amended counterclaim eliminating its claims that these four patents are invalid. Efforts to reach any agreement regarding amended pleadings were fruitless, however, and on September 22, 1981, Lely filed the motion now under consideration.

B. PLAINTIFF'S MOTION TO AMEND THE COMPLAINT

The defendant seeks to characterize the plaintiff's motion to amend the complaint as a motion to voluntarily dismiss certain claims pursuant to Fed.R.Civ.P. 41(a)(2). However, the plaintiff seeks to "dismiss" only certain claims or issues and not the entire action. "While often dubbed a Rule 41(a) voluntary dismissal, the procedure being followed ... is more properly viewed as a Rule 15 amendment to the complaint." Management Investors v. United Mine Workers, 610 F.2d 384, 394 (6th Cir.1979) (citations and footnote omitted). As explained in 5 Moore's Federal Practice ¶ 41.06-1, at 41-92-94 (2d ed. 1981) (footnotes omitted):

The language of both paragraphs (1) and (2) of Rule 41(a) speaks of the dismissal of an action. Consequently, some problem arises where a voluntary dismissal is sought of fewer than all the claims or all the parties involved in the action, i.e., a fragment of the action. The problem, though, is more technical than substantial.

Where a plaintiff desires to eliminate an issue, or one or more but less than all of several claims, but without dismissing as to any of the defendants the problem may technically be regarded as one of amendment that is governed by Rule 15. Under Rule 15(a) plaintiff may amend his complaint once as a matter of course at any time before the answer is served. Otherwise he may amend his complaint only by leave of court or by written consent of the defendant. Where he seeks leave of court he invokes the district court's discretion and while leave is to be freely given when justice so requires, the court may deny leave, or impose conditions upon leave to amend to eliminate an issue or claims as it would upon a voluntary dismissal under Rule 41(a)(2).

But since the district court's discretion is involved when leave of court is required, whether plaintiff's motion is made under Rule 15 or under Rule 41(a)(2), the choice of rules is largely a technical one. But technically speaking, subdivision (a) of Rule 41 does not include dismissal of less than all the claims against any particular defendant.

. . . . .

Thus, an amendment under Rule 15(a) is technically the proper procedure, rather than voluntary dismissal under Rule 41(a).

See also Smith, Kline & French Laboratories v. A.H. Robins Co., 61 F.R.D. 24 (E.D. Pa.1973); Fastener Corp. v. Spotnails, Inc., 291 F.Supp. 974 (N.D.Ill.1968).

In Smith, Kline & French Laboratories v. A.H. Robins Co., supra, the court extensively discussed the applicability of Fed.R.Civ.P. 15(a) and 41(a) to the type of situation presently before this Court.

We are therefore called upon to determine if the SK & F motion to withdraw the present Count II has been properly brought under Rule 15(a), or whether it must be brought under Rule 41(a)(2). The initial issue before us is whether Rule 41 is applicable to the present case. Both Rules 41(a)(1) and 41(a)(2) apply by their terms to dismissal of an "action." The reference to an "action" in Rule 41(a) contrasts with Rule 41(b), which provides that "a defendant may move for dismissal of an action or of any claim against him." (Emphasis supplied). The language of Rule 41(b) is broader and more comprehensive than the parallel language in Rule 41(a). 5 Moore's Federal Practice ¶¶ 41.06-1, 41-112, 41.12, 41.131. While the notes of the Advisory Committee do not discuss the question, it is reasonable to assume that the drafters of Rule 41 would have included similar language in Rule 41(a), had they intended to have that rule cover dismissal by the plaintiff of less than all the claims against any defendant.

The two dismissal rule itself, upon which Robins relies, makes a distinction between an "action" and a "claim."

Unless otherwise stated in the notice of dismissal or stipulation, the dismissal is without prejudice, except that a notice of dismissal operates as an adjudication upon the merits when filed by a plaintiff who has once dismissed in any court of the United States or of any state an action based on or including the same claim. Rule 41(a)(1).

The interpretation of Rule 41 which is urged by Robins would require the Court to construe the term "action" as though it were the equivalent of the traditional concept of a "cause of action," a phrase which does not appear in the Federal Rules of Civil Procedure. 2 Moore's Federal Practice ¶ 2.062.

The drafters of the Federal Rules chose instead the concept of a "claim for relief" (Rule 8(a)), or simply a "claim," which has been defined as "the aggregate of operative facts which give rise to a right enforceable in the courts." Original Ballet Russe, Limited v. Ballet Theatre, Inc., et al., 133 F.2d 187 (2d Cir.1943). See Taylerson v. American Airlines, Inc., 183 F.Supp. 882 (S.D.N.Y.1960).

A "Civil Action," or an "action," on the other hand, is the sum total of the claims which the parties assert against each other. Once an action is commenced by the filing of a complaint, all subsequent proceedings are part of the action thus commenced. Stahl v. Paramount Pictures, 167 F.Supp. 836 (S.D.N.Y.1958).

. . . . .

The Federal Rules and the cases which construe them thus make a clear distinction between a "claim" and an "action." Therefore, when Rule 41(a) refers to dismissal of an "action," there is no reason to suppose that the term is intended to include the separate claims which make up an action. When dismissal of a claim is intended, as in Rule

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