Cheatham Electric Switching Device Co. v. Transit Development Co.

• Decision Date: 26 October 1911
• Citation: 191 F. 727
• Parties: CHEATHAM ELECTRIC SWITCHING DEVICE CO. v. TRANSIT DEVELOPMENT CO. et al.
• Court: U.S. District Court — Eastern District of New York

191 F. 727

CHEATHAM ELECTRIC SWITCHING DEVICE CO. v. TRANSIT DEVELOPMENT CO. et al.

United States Circuit Court, E.D. New York.

October 26, 1911

O Ellery Edwards, Jr., for complainant.

Kiddle & Wendell, for defendants.

CHATFIELD District Judge.

The complainant heretofore sued at law two of the present defendants for infringement of patents by the use manufacture, and installation of certain switching devices in Brooklyn, N.Y.

That action was at law, and was tried before a jury, resulting in a verdict for the plaintiff.

It appears by the allegations of the present complaint that the defendant Transit Development Company obtained the basic part of those structures from the defendant American Automatic Switch Company; that these devices were delivered in Brooklyn, and there supplied to and installed upon the lines of the defendant Nassau Electric Railroad Company. A number of other devices similarly furnished and installed are included in the present suit. The wiring and part of the work of installation was done by the defendant, the Nassau Company, which operates the devices, and, according to the present complaint, the defendant, the switch company, when supplying the original portions of each device, agreed to protect the other defendants from the results of any litigation which might ensue. The defendants the Transit Development Company and the Nassau Company are corporations of the state of New York, doing business within this district. The defendant the switch company is a corporation of New York, doing business in the Southern district, and having no organized place of business or residence in the Eastern district, where this suit was brought. The complainant is a corporation of the state of Kentucky. Inasmuch as the action involves the validity and infringement of patents, the court in this district undoubtedly has jurisdiction against the two defendants which have an office and do business here, under the provisions of chapter 395 Act March 3, 1897, 29 Stat. 695 (U.S. Comp. St. 1901, p. 588).

The present action has been brought in equity. It asks for the remedy of an injunction and for an accounting. It bases the rights, out of which the cause of action is said to have grown, upon the same patents litigated in the prior suit. The precise reason for this action is said to be that the defendant switch company has furnished a number of additional devices to the other defendants, who have used them in a way similar to that involved in the previous action, and an injunction is desired. The switch company's connection with the matter seems to have been that it contracted to sell and did sell or furnish the devices, which were installed later, to the other two defendants in Brooklyn, and that it agreed with them to do so for the purpose of such installation.

Looking at the matter, therefore, from the standpoint of a patent suit, we have the case of an alleged joint infringement by the defendants the transit company and the development company, and an allegation of contributory infringement or participation in actual infringement on the part of the switch company. Under these circumstances, the defendant the switch company has appeared specially and has interposed a plea to the jurisdiction of the court, claiming that, under the provisions of the act of 1897, above cited, no suit based upon the infringement of a patent can be brought in this district against the switch company, inasmuch as it either has not infringed in this district, or, if any of its acts should constitute infringement, that it has not an office or established place of business in the district.

We are not called upon to consider the questions which might be raised by demurrer or by answer, as to the possibility of showing joint infringement so as to unite the various defendants in one suit; nor is it necessary to consider whether or not jurisdiction exists against all of the defendants upon the merits of the cause of action set forth.

The question raised by the present bill affects solely the right to issue process against the defendant switch company (a nonresident) upon a complaint which does not allege that this defendant company is infringing, and has a regular place of business within this district.

Two points must be considered. First. If the action is an action for the infringement of a patent alone, so that the jurisdiction of the United States courts is sought under sections 629, 711, Rev. St. (U.S. Comp. St. 1901, pp. 503, 577), because a question under the patent law is involved, can the defendant switch company be held as a party, and can the action be maintained in this district, under the provisions of section 740 of the Revised Statutes, which is as follows:

'Sec. 740. When a state contains more than one district, every suit not of a local nature, in the Circuit or District Courts thereof, against a single defendant, inhabitant of such state, must be brought in the district where he resides; but if there are two or more defendants, residing in different districts of the state, it may be brought in either district, and a duplicate writ may be issued against the defendants, directed to the marshal of any other district in which any defendant resides. The clerk issuing the duplicate writ shall indorse thereon that it is a true copy of a writ sued out of the court of the proper district; and such original and duplicate writs, when executed and returned into the office from which they issue, shall constitute and be proceeded on as one suit; and upon any judgment or decree rendered therein, execution may be issued, directed to the marshal of any district in the same state. ' (U.S. Comp. St. 1901, p. 587.)

Second. If section 740 be held not to extend the jurisdiction of the courts by making it possible to issue process to other districts of this state in patent cases, can the present action be maintained as a suit between citizens of different states under other statutes than those conferring jurisdiction with respect to patents, and hence can the suit be maintainable under the general language of section 740 against the party which has a place of business and is an inhabitant of another district in this state, and which has infringed (it is alleged) jointly with the other defendants who reside in this district?

It was admitted upon the argument, and the papers show, that the defendant the switch company could not be sued alone in this district for alleged infringement of patent, as it has no regular place of business in this district. Joining it with two other defendants in a patent suit can make no difference, unless section 740 confers jurisdiction to sue.

The complainant admits that the law of 1897 is conclusive and controls, if there be but one defendant in an action. But it contends that if infringement occurs in this district, and the other defendants can be sued here, then section 740 should apply even to a patent case, on the ground that it is within the words of the section 'any suit in equity.' In other words, it makes section 740 apply, so as to bring into the suit another defendant, who could not be sued alone, and who thus would be sued in a district where jurisdiction to sue is not given by the act of 1897. It has been held in numerous cases, such as Goddard v. Mailler (C.C.) 80 F. 422, Shaw v. American Tobacco Co., 108 F. 842, 48 C.C.A. 68, Feder v. A. B. fiedler & Sons (C.C.) 116 F. 378, U.S. Consolidated Seeded Raisin Co. v. Phoenix Raisin S. & P. Co. (C.C.) 124 F. 234, and Bowers v. Atlantic, G. & P. Co. (C.C.) 104 F. 887, that, under the statutes above cited, no patent case can be maintained, except in a district in which the defendant resides or has a regular place of business, and has infringed.

It was further said in Bowers v. Atlantic, G. & P. Co., supra, Thomson-Houston Electric Co. v. Electrose Mfg. Co. (C.C.) 155 F. 543, United Shoe Machinery Co. v. Duplessis Independent Shoe Mach. Co., Limited (C.C.) 133 F. 930, and Goddard v. Mailler, supra, that by the law of 1897 jurisdiction of the courts in patent suits has been further restricted from its previous scope, and left in the condition approved by the cases cited, where, as is said in the Thomson-Houston Case, supra:

'Compliance with the requirements of the act of March 3, 1897, is necessary in order that jurisdiction may be had.'

It would seem, therefore, that, if the...