Cold Metal Process Co. v. UNITED ENGINEERING & F. CO.

• Decision Date: 28 January 1935
• Docket Number: No. 2991.,2991.
• Citation: 9 F. Supp. 994
• Parties: COLD METAL PROCESS CO. v. UNITED ENGINEERING & FOUNDRY CO.
• Court: U.S. District Court — Western District of Pennsylvania

9 F. Supp. 994

COLD METAL PROCESS CO. v. UNITED ENGINEERING & FOUNDRY CO.

No. 2991.

District Court, W. D. Pennsylvania.

January 28, 1935.

Reed, Smith, Shaw & McClay, of Pittsburgh, Pa. (by John G. Frazer, John J. Heard, and John C. Bane, Jr., all of Pittsburgh, Pa.), and Byrnes, Stebbins & Blenko, of Pittsburgh, Pa. (by Walter J. Blenko and W. H. Parmelee, both of Pittsburgh, Pa.), for plaintiff.

Patterson, Crawford, Arensberg & Dunn, of Pittsburgh, Pa. (by C. F. C. Arensberg, of Pittsburgh, Pa.), and Brown, Critchlow & Flick, of Pittsburgh, Pa. (by Jo. Baily Brown and Paul N. Critchlow, both of Pittsburgh, Pa.), for defendant.

McVICAR, District Judge.

Plaintiff, in its bill, seeks an injunction to restrain the defendant from the prosecution of certain suits in other federal District Courts, that this court, by reference to arbitration, master, or otherwise, determine the amount due to plaintiff under a certain agreement with defendant, and for the determination of future payments thereunder. Defendant filed an answer to the bill. The suit is now before us on the motion of plaintiff for a preliminary injunction to restrain the prosecution of the suits specifically referred to hereinafter and the rule to show cause granted thereon. The evidence was taken in open court, and argument was made on the issues involved.

From the evidence it appears that on June 20, 1927, plaintiff and defendant had applications in the United States Patent Office relating to four high rolling mills and the rolling of thin material; that on said date the parties entered into a contract whereby it was agreed that, if the claim or claims to common subject-matter in the applications aforesaid were granted, plaintiff would grant to defendant an exclusive license to make, use, and sell rolling mills under said claim or claims. It was further agreed in said contract that the parties shall immediately proceed to negotiate payment to be made by defendant to plaintiff for the license aforesaid, and, if the parties were unable to agree, that the matter should be submitted to three arbitrators named therein.

On October 20, 1930, the Commissioner of Patents issued to plaintiff patent 1,779,195 allowing said claims. Defendant made and sold four high rolling mills covered by said patent. On March 7, 1931, plaintiff filed a bill in equity against the defendant at No. 2506 in this court, 3 F. Supp. 120, to restrain the defendant from infringing said patent, and took the position in said suit that the contract of June 20, 1927, aforesaid, was not a valid subsisting agreement between the parties. The defendant filed an answer thereto, in which it alleged that the patent aforesaid was invalid, and also that it was not an infringer by reason of the 1927 contract. This court found that the patent aforesaid was valid, that the contract of June 20, 1927, was a valid subsisting agreement between the parties, and that by reason thereof defendant was not an infringer. The court entered a decree dismissing plaintiff's bill at its cost. An appeal was taken by defendant from this decree to the Circuit Court of Appeals of this circuit. On motion of plaintiff the appeal was dismissed by the Circuit Court of Appeals January 3, 1934. 68 F.(2d) 564. The petition of the defendant for a writ of certiorari from the decree of the Circuit Court of Appeals was denied by the Supreme Court of the United States March 5, 1934. 291 U. S. 675, 54 S. Ct. 530, 78 L. Ed. 1064. Since that time the parties have conducted negotiations for a settlement of the royalty due plaintiff under the contract of June 20, 1927. So far they have been unable to agree. The parties have also conferred as to actions against infringers; there being five other companies manufacturing mills alleged to be covered by the patent aforesaid in addition to the defendant.

On July 9, 1934, defendant brought an action in the United States District Court for the Northern District of Ohio to restrain E. W. Bliss Company from infringing said patent. On October 3, 1934, defendant brought a similar action in the District Court of the United States for the Northern District of Indiana to restrain the Illinois Steel Company, the Continental Roll & Steel Foundry Company, and the Hubbard Steel Foundry Company from infringing said patent. Plaintiff, on July 7, 1934, brought a suit against the United States Steel Corporation and the American Sheet & Tin Plate Company in the United States court for the state of New Jersey to restrain the infringement of said patent. Plaintiff also brought an action on September 21, 1934, in the United States District Court for the District of Delaware against the Continental Roll & Steel Foundry Company to restrain infringement of the patent aforesaid by said defendant.

On October 5, 1934, plaintiff filed a bill in this court under the United States Arbitration Act (sections 1-15 9 USCA §§ 1-15) against the defendant to enforce the provision in the contract of June 20, 1927 in regards to arbitration. Defendant filed a motion to dismiss on the ground that this court was without jurisdiction under said act. This position was sustained in an opinion filed herewith. (D. C.) 9 F. Supp. 992. Defendant, on October 15, 1934, filed a bill in equity in the United States District Court for the Northern District of Ohio in which it prayed that the amount due plaintiff under the contract of June 20, 1927, be determined by arbitrators to be appointed by the court, or by a master, or otherwise, and for other relief. In the present suit plaintiff seeks, in its prayers for relief, inter alia, to enjoin the prosecution of the aforesaid suits brought by defendant, to have the amount due plaintiff, under the 1927 agreement, determined by arbitration or by a master, or otherwise, and also to fix the amount to be paid in the future.

As to the time and place for the bringing of the suits for infringement the evidence indicates that there was a scramble between the parties. Plaintiff evidently was of the opinion that it was to its interest to have the infringement suits brought in other District Courts within the same circuit as this court, as this court was the only court which had passed upon the validity of the patent involved. Plaintiff also evidently was of the opinion that it was to its interest to have the royalty or amount to be paid under the 1927 contract fixed before there were any decisions on the validity of the...