Christensen v. Westinghouse Traction Brake Co.

• Decision Date: 30 September 1916
• Docket Number: 80.
• Citation: 235 F. 898
• Parties: CHRISTENSEN et al. v. WESTINGHOUSE TRACTION BRAKE CO.
• Court: U.S. District Court — Western District of Pennsylvania

235 F. 898

CHRISTENSEN et al. v. WESTINGHOUSE TRACTION BRAKE CO.

No. 80.

United States District Court, W.D. Pennsylvania.

September 30, 1916

Lines Spooner, Ellis & Quarles, of Milwaukee, Wis., Reed, Smith Shaw & Beal, of Pittsburgh, Pa., and Wm. R. Rummler, of Chicago, Ill., for plaintiffs.

James K. Bakewell, of Pittsburgh, Pa., Paul Synnestvedt, of Philadelphia, Pa., and Thomas B. Kerr, of New York City, for defendant.

THOMSON District Judge.

This is a motion on the part of defendant for leave to amend its answer by setting up a counterclaim of infringement. Suit is brought for infringement of certain patents, one for an improvement in combined pumps and motors, and the other for an improvement in valves for compressors. These patents are owned by the plaintiff Christensen, under which the plaintiff AllisChalmers Manufacturing Company has an exclusive license. The defendant now asks leave to bring into the suit, by way of counterclaim, a charge of infringement against the plaintiffs of its patent for a new and useful improvement in motor compressors.

Defendant's right to counterclaim for infringement of its patent depends on the proper interpretation of rule 30 of the General Rules in Equity (198 F. xxvi, 115 C.C.A. xxvi), which reads as follows:

'The answer must state in short and simple form any counterclaim arising out of the transaction which is the subject-matter of the suit, and may, without cross-bill, set out any set-off or counterclaims against the plaintiff which might be the subject of an independent suit in equity against him, and such set-off or counterclaim so set up shall have the same effect as a cross-suit, so as to enable the court to pronounce a final judgment in the same suit both on the original and cross claims.'

The wording of this rule has resulted in conflicting opinions as to its true meaning. Some judges have given to the rule a very broad interpretation, holding that the first part of the rule is mandatory and the second part permissive; that the words 'counterclaim arising out of the transaction which is the subject-matter of the suit' cover broadly all matters which theretofore could have been pleaded by cross-bill; and that the word 'counterclaim,' as used in the second or permissive part of the rule, includes all cross-claims upon which the defendant might sue the plaintiff in equity, even if having no connection whatever with the plaintiff's cause of action. This broad interpretation of the rule is maintained by Judge Chatfield in Marconi Wireless Telegraph Co. v. National Electric Signalling Co (D.C.) 206 F. 295, by Judge Lacombe in Vacuum Cleaner Co. v. American Rotary Valve Co. (D.C.) 208 F. 419, and by Judge Rellstab in Electric Boat Co. v. Lake Torpedo Boat Co. (D.C.) 215 F. 377. On the other hand, it has been held that the word 'counterclaim' in the paragraph 'may, without cross-bill, set out any set-off or counterclaim against the plaintiff which might be the subject of an independent suit in equity against him,' applies only to a counterclaim proper; that is, such as could properly be set up by cross-bill, the subject- -matter of which grows out of and the relief sought depends upon, the subject-matter of the plaintiff's bill. This view is held by Judge Dodge in Terry Steam Turbine Co. v. Sturtevant Co. (D.C.) 204 F. 103, and in Klauder-Weldon Dyeing Machine Co. v. Giles (D.C.) 212 F. 452, by Judge Geiger in Adamson v. Shaler (D.C.) 208 F. 566, and in Atlas Underwear Co. v. Cooper Underwear Co. (D.C.) 210 F. 347, and by Judge Thomas in the district of Connecticut in Sydney v. Mugford Printing & Engraving Co., 214 F. 841.

The reasoning of Judge Dodge and those with him, who have adopted the more restricted application of the rule, appears to me as the more logical. It seems to be reasonably clear that the...