Cold Metal Process Co. v. UNITED ENGINEERING & F. CO.
| Decision Date | 18 February 1942 |
| Docket Number | No. 2991.,2991. |
| Citation | 43 F. Supp. 375 |
| Parties | COLD METAL PROCESS CO. v. UNITED ENGINEERING & FOUNDRY CO. |
| Court | U.S. District Court — Western District of Pennsylvania |
Stebbins & Blenko and Reed, Smith, Shaw & McClay, all of Pittsburgh, Pa., for plaintiff.
Brown, Critchlow & Flick and Patterson, Crawford, Arensberg & Dunn, all of Pittsburgh, Pa., for defendant.
This action is now before us on the motion of the defendant filed June 20, 1941, for permission to file and serve upon the plaintiff a second supplemental answer and counterclaim, a copy of which is attached to the motion.
In the proposed second supplemental answer and counterclaim it is averred, inter alia, that the plaintiff and the Carnegie-Illinois Steel Corporation, August 30, 1940, entered into an agreement whereby said Carnegie-Illinois Steel Corporation and its subsidiaries were granted an unlimited non-exclusive license and release under patent No. 1,779,195 of the plaintiff; that the defendant is not required to account for the value of the license which it holds under the aforesaid patent until said patent is held valid by a court of competent jurisdiction; that the contract, aforesaid, was in violation of the rights of the defendant and was an injury to it; that the plaintiff is soliciting contracts of the same nature from other metal manufacturers and that the facts averred constitute an irreparable injury to the defendant. In said answer and counterclaim it is prayed: First "that no further proceeding be taken with respect to any payments alleged to be due from the defendant to the plaintiff" by reason of the conduct alleged. The second prayer, in the alternative, is that no further proceedings be taken until the patent aforesaid has been held valid and has been enforced by a court of competent jurisdiction; and the third prayer is for an injunction from offering to other metal manufacturers similar agreements. There also is a prayer for general relief.
The first suit of the plaintiff against the defendant on the aforesaid patent was filed in this court March 7, 1931. 3 F.Supp. 120. Defendant filed an answer, alleging that said patent was invalid and a second defense, only, if the patent is found valid; that it holds a license from the plaintiff, and, therefore, is not an infringer. This court held that the patent was valid; that the defendant had not infringed the patent by reason of a license issued by the plaintiff to the defendant under agreement of June 20, 1927. The appeal taken to the Third Circuit Court of Appeals was dismissed. 68 F.2d 564.
November 17, 1934, plaintiff brought a second action against the defendant to restrain the defendant from proceeding with certain actions in other districts, wherein the question of validity of the aforesaid patent was raised and for the specific performance of the aforesaid license agreement. This court refused plaintiff's application for a preliminary injunction. 9 F.Supp. 994. On appeal, the decree of this court was reversed. 3 Cir., 79 F.2d 666. Upon a final hearing in said case, this court found that the aforesaid agreement was a valid, subsisting agreement between the parties; that the plaintiff was entitled to an accounting for the value of the license which defendant held thereunder and granted an injunction restraining the prosecution of the aforesaid actions. On appeal, 3 Cir., 107 F.2d 27, 32, the court found that that part of the decree restraining the defendant from the prosecution of suits in other district courts should be set aside and that the agreement of 1927 is
The Court's mandate read: "the decree of the said District Court in this cause be, and the same is hereby modified in accordance with the opinion of this Court, and when so modified, affirmed with costs."
On appeal from a decision of the District Court of New Jersey, the Circuit Court of Appeals of this circuit found that the aforesaid patent was valid. Cold Metal Process Co. v. Carnegie-Illinois Steel Corp., 3 Cir., 108 F.2d 322.
Subsequently, the plaintiff entered into the contract dated August 30, 1940 with the Carnegie-Illinois Steel Corporation, wherein it was set forth that the plaintiff was the owner of four patents, one of which was the aforesaid patent; that the rights of the plaintiff in the aforesaid patent was subject to the...
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Cold Metal Process Co. v. United Engineer. & Fdry. Co.
...v. United Engineering & Foundry Co., D.C.1935, 9 F. Supp. 994, reversed, 3 Cir., 79 F.2d 666. 4 See Cold Metal Process Co. v. United Engineering & Foundry Co., D.C.1942, 43 F.Supp. 375, 376. 5 On March 28, 1949, 15 years after this suit was started, United filed a cross-complaint seeking in......
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Cold Metal Process Company v. United Engineering Foundry Company
...In 1942, the District Court denied that motion on the ground that it could carry out only the existing mandate of the Court of Appeals. 43 F.Supp. 375. It suggested, however, that the injunction sought by United in its counterclaim should be the subject matter of another action, and that Un......
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Cold Metal Process Co. v. UNITED ENGINEERING & FDRY. CO.
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