Catanzaro v. International Telephone & Telegraph Corp.

• Citation: 378 F. Supp. 203
• Decision Date: 20 June 1974
• Docket Number: Civ. A. No. 4780.
• Parties: Anthony P. CATANZARO, Plaintiff, v. INTERNATIONAL TELEPHONE & TELEGRAPH CORP., et al., Defendants.
• Court: U.S. District Court — District of Delaware

378 F. Supp. 203

Anthony P. CATANZARO, Plaintiff, v. INTERNATIONAL TELEPHONE & TELEGRAPH CORP., et al., Defendants.

Civ. A. No. 4780.

United States District Court, D. Delaware.

June 12, 1974.

As Amended June 20, 1974.

Anthony P. Catanzaro, pro se.

David A. Anderson, of Potter Anderson & Corroon, Wilmington, Del., and Paul M. Craig, Jr., of Craig & Antonelli, Washington, D. C., of counsel, for International Telephone & Telegraph Corp.

Arthur G. Connolly, Jr., of Connolly, Bove & Lodge, Wilmington, Del., Foorman L. Mueller, George Aichele, and James W. Gillman, of Mueller, Aichele & Ptak, Chicago, Ill., of counsel, for Motorola, Inc.

Rodney M. Layton, of Richards, Layton & Finger, Wilmington, Del., and John Farley, of Fish & Neave, New York City, N. Y., of counsel, for Radio Corp. of America.

Arthur G. Connolly, Jr., of Connolly, Bove & Lodge, Wilmington, Del., George A. Gust and Robert G. Irish, of Gust, Irish, Lundy & Welch, Fort Wayne, Ind., of counsel, for Masco Corp.

OPINION and ORDER

WRIGHT, Senior District Judge.

This patent infringement action raises intriguing questions about the impact of Rule 19, Federal Rules of Civil Procedure, on the ability of patent co-owners independently to protect their rights. Anthony Catanzaro, the owner of an undivided one-half interest¹ in United States Patent 2,906,875 entitled Station Sampling Radio, alleges infringement by the four corporate defendants, all of which are incorporated in Delaware.² Catanzaro is proceeding in forma pauperis and without the assistance of counsel. Jurisdiction is conferred on this Court by 28 U.S.C. § 1338(a), and venue is proper under 28 U.S.C. § 1400(b). Defendants have moved, pursuant to Rules 12(b)(7) and 19(b), Federal Rules of Civil Procedure, to dismiss the complaint for failure to join an indispensable party.

Defendants contend that participation by Edward T. Molinaro, the patentee and owner of the remaining undivided half interest in the patent in suit, is indispensable for a just resolution of this case. The parties agree that Molinaro, a resident of Carbondale, Pennsylvania, is not subject to service of the process of this Court.³ Traditionally, courts have declared that an owner of an undivided share of a patent can sue for infringement only when he sues jointly with his co-owner. Waterman v. Mackenzie, 138 U.S. 252, 255, 11 S.Ct. 334, 34 L.Ed. 923 (1891), Rainbow Rubber Co. v. Holtite Mfg. Co., 20 F.Supp. 913 (D. Md.1937), Gibbs v. Emerson Electric Radio Mfg. Co., 29 F.Supp. 810 (W.D. Mo.1939), Hurd v. Sheffield Steel Corp., 181 F.2d 269 (8th Cir. 1950), Agrashell, Inc. v. Hammons Products Company, 352 F.2d 443 (8th Cir. 1965); see also Union Trust National Bank v. Audio Devices, Inc., 295 F.Supp. 25 (S.D.N.Y. 1969). However, the adoption of amended Rule 19, Federal Rules of Civil Procedure, in 1966 makes inappropriate any contention that patent co-owners are per se indispensable in infringement suits.⁴ As the Supreme Court noted in Provident Tradesmens Bank & Trust Co. v. Patterson, 390 U.S. 102, 88 S.Ct. 733, 19 L.Ed.2d 936 (1968), Rule 19 teaches that whether or not a party is indispensable is the conclusion, not the starting point, of legal analysis:

The decision whether to dismiss (i. e., the decision whether the missing person is "indispensable") must be based on factors varying with the different cases, some such factors being substantive, some procedural, some compelling by themselves, and some subject to balancing against opposing interests. Rule 19 does not prevent the assertion of compelling substantive interests; it merely commands the courts to examine each controversy to make certain that the interests really exist. To say that a court "must" dismiss in the absence of an indispensable party and that it "cannot proceed" without him puts the matter the wrong way around: a court does not know whether a particular person is "indispensable" until it has examined the situation to determine whether it can proceed without him. 390 U.S. at 118-119.

Accordingly, this Court must examine the factors suggested by Rule 19 before deciding whether to proceed in the absence of the co-owner of the patent. Accord, Owatonna Manufacturing Company v. Melroe Company, 301 F.Supp. 1296 (D.Minn.1969); but see Dynatech Corp. v. Frigitronics, Inc., 318 F.Supp. 851 (D.Conn.1970), Leesona v. Duplan Corporation, 319 F.Supp. 223 (D.R.I.1970).

At the outset it is plain that were Molinaro subject to service of process, his joinder would be appropriate under Rule 19(a). As the owner of an undivided half interest in the patent in suit, he claims an interest in the subject of this litigation equal to the plaintiff's. Moreover, defendants vigorously contend that since Molinaro would not be bound by any resolution of this case in his absence, they face a substantial risk of duplicate litigation brought by Molinaro in the future.⁵ This Court agrees and therefore finds that the requirements of Rule 19(a)(2)(ii) are satisfied by the facts of this case and that a determination pursuant to Rule 19(b) is necessary.

The first relevant factor under Rule 19(b) is the extent to which a judgment rendered in Molinaro's absence might be prejudicial to him. Plaintiff has submitted to this Court an affidavit by Molinaro disavowing any intention of bringing any subsequent infringement action against the defendants.⁶ Irrespective of whether this affidavit, as defendants contend, fails to immunize the defendants from future infringement actions brought by Molinaro, it unmistakably demonstrates that Molinaro does not feel prejudiced by the continuation of this litigation in his absence. Furthermore, the Court notes that Molinaro has joined as a plaintiff in several pending infringement actions in other districts,⁷ one of which is further removed from his residence than the District of Delaware. As a result, this Court is under no compulsion to dismiss this action because of possible prejudice to Molinaro.

The question of possible prejudice to the defendants, however, is entitled to serious consideration. The defendants fear that should this Court determine that the patent in suit is either invalid or not infringed, Molinaro, not being bound, Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 329, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971), may relitigate those issues at a later date.⁸ Such duplicate litigation, carrying the possibility of inconsistent results, is both vexatious for the defendants and inefficient for the judicial system. Defendants aptly point out that Blonder-Tongue was an effort by the Supreme Court to alleviate the burdens caused by relitigation of patents once held invalid.

On the other hand, several factors tend to reduce the risk to the defendants of the duplicate litigation they fear. First, as a practical matter Molinaro may be deterred by the stare decisis effect of a finding by this Court of invalidity or noninfringement. Second, Molinaro's affidavit may be held to preclude any further litigation on his part. Defendants contend that this purported waiver of further litigation may be ineffective because (a) there is no reference to any consideration received by Molinaro for this undertaking, (b) there is no statement that the affidavit is irrevocable, (c) Molinaro, proceeding without counsel, may not have understood its consequences, (d) nothing in the affidavit binds Molinaro's assigns or heirs, and (e) it does not waive the right to sue defendants' customers. This Court cannot resolve the effectiveness of this affidavit in Molinaro's absence, but for present purposes, it suffices to say that the affidavit will conceivably bar Molinaro from future litigation against the defendants. Third, the possibility that a court would award attorney fees against Molinaro should he prove unsuccessful in a future action, 35 U.S.C. § 285, might also deter him from duplicate litigation. Finally, Molinaro's refusal to join in this action while prosecuting others may support an equitable defense of laches in a future proceeding. See Briggs v. Wix Corporation, 308 F.Supp. 162 (N.D.Ill.1969).

The third relevant consideration under Rule 19(b) is whether Catanzaro will have an adequate remedy if this action is dismissed for nonjoinder.⁹ Following oral argument on the motion to dismiss, this Court requested counsel for defendants to determine whether or not each defendant has a regular and established place of business in Pennsylvania, and if so, whether it makes or sells in Pennsylvania equipment alleged to be infringing in the complaint. If these requirements are met, 28 U.S.C. § 1400(b), plaintiff has an adequate forum in Pennsylvania, where he can compel Molinaro to join pursuant to Rule 19(a). According to the letter responses of defense counsel, Motorola and RCA have regular and established places of business in Pennsylvania and sell allegedly infringing products there, but neither International Telephone & Telegraph (ITT) nor Masco has a regular and established place of business in Pennsylvania. Consequently, Catanzaro has an adequate alternative forum only with respect to Motorola and RCA.

The balance of Rule 19(b) considerations with respect to RCA and Motorola is not difficult. Catanzaro can proceed against these defendants in Pennsylvania without subjecting them to any risk of duplicate litigation. Any interest Catanzaro may have in proceeding against all four defendants in one action is outweighed by the fact that substantial prejudice to these two defendants can be avoided by litigation in Pennsylvania, and the motions of these defendants will be granted.

With respect to ITT and Masco, the balance of considerations is more difficult. If the Court allows the action to proceed in the absence of Molinaro, these two defendants will be subjected to a qualified risk of duplicate litigation. If, on the other hand, this Court dismisses the action, Catanzaro will be deprived of his day in court against ITT and...