Commercial Acetylene Co. v. Avery Portable Lighting Co.

• Decision Date: 22 December 1906
• Citation: 152 F. 642
• Parties: COMMERCIAL ACETYLENE CO. v. AVERY PORTABLE LIGHTING CO.
• Court: U.S. District Court — Eastern District of Wisconsin

152 F. 642

COMMERCIAL ACETYLENE CO. v. AVERY PORTABLE LIGHTING CO.

United States Circuit Court, E.D. Wisconsin.

December 22, 1906

This is a suit in equity commenced on the 24th day of July, 1906 based upon United States letters patent No. 664,383 and No 727,609, for acetylene gas tanks. An answer was filed September 29th, in which the invalidity of the complainant's patents is asserted on various grounds, and infringement is denied. At the same time the complainant filed another bill in this court against the Pressed Steel Tank Company of Milwaukee, Wis., based on the same patents. The averments of the two bills are identical, except that the Pressed Steel Tank Company is charged with being the manufacturer of all the tanks sold and distributed by this defendant, and with confederating with this defendant to enable it to sell and put upon the market tanks that were known to infringe complainant's patents. An answer in such last-named suit was promptly interposed, setting up substantially the same defenses. Thus it appears that this court acquired original jurisdiction of the subject-matter of said two suits, wherein the two chief alleged infringers are made defendants and this happened before any other court acquired jurisdiction over such subject-matter.

On the 4th day of October, 1906, the defendant filed a petition in this court setting up the facts above stated, and further alleging:

'That shortly after the commencement of the two suits above enumerated, suit was commenced in the United States Circuit Court, Northern District of Illinois, Eastern Division, by the complainant herein against Excelsior Supply Company, of Chicago, Ill., the bill of complaint in the last-named suit being substantially identical with the bill of complaint herein; and that the answer in said suit was filed on October 1, 1906, the day it was due under the rules.

'(5) That since the commencement of the present cause the following suits have been begun by the Commercial Acetylene Company, the complainant herein, against the following: In the United States Circuit Court, Southern District of New York, against the Motor Car Equipment Company. In the United States Circuit Court, Southern District of New York, against Wyckoff, Church & Partridge, Inc. In the United States Circuit Court, Northern District of Ohio, against W. D. Strong Company. In the United States Circuit Court, Southern District of Ohio, against the Curtin-Williams Auto Company. In the United States Circuit Court, Western District of New York, against the Centaur Motor Company. In the United States Circuit Court, District of Minnesota, against the Pence Automobile Company. In the United States Circuit Court, Western Western District of Missouri, against Brick Motor Car Company.

'(6) That, as your petitioner is informed and believes, the bills of complaint in each of the above cases are substantially identical with the bill of complaint herein.

'(7) That each of the defendants named in paragraph 5 hereof is a purchaser of petitioner's gas tanks, and is in fact a customer of petitioner's, each one handling petitioner's goods in the respective locality in which each is located.

'(8) That petitioner is informed and believes that each of the defendants named in paragraph 5 hereof handles no other gas tanks except those manufactured by your petitioner, unless it be the gas tanks manufactured by the Concentrated Acetylene Company of Indianapolis, Indiana, and known as 'Presto-Lite Tanks,' and that the said Concentrated Acetylene Company is a licensee of the Commercial Acetylene Company, the complainant herein, so that the only reason for suing each of the defendants above referred to for patent infringement is for the purpose of reaching the tanks which said defendant has purchased from your petitioner, and which are of your petitioner's manufacture.

'(9) That your petitioner manufactures only one form or style of tanks (although in different sizes), and has sold to the above defendants only one particular form or style of tank, a sample thereof being herewith produced in court and marked 'Exhibit A.'

'(10) That your petitioner believes, and therefore charges the fact to be, that the complainant herein has begun said suits against your petitioner's customers for the purpose of annoying and harassing your petitioner and its customers, and for the purpose of putting your petitioner to unnecessary and burdensome expense in defending each of the suits above mentioned, whereas the entire question of the validity of the patents, of infringement thereof by the tanks of petitioner's manufacture, and the question of recovery of profits and damages could be tried in the present cause without the burden of defending a multiplicity of suits scattered all over the United States.

'(11) That your petitioner is financially responsible and amply able to respond to any amount which may be taxed by this court against your petitioner as profits or damages arising out of infringement on complainant's patents by the manufacture and sale of all of petitioner's product, should the court in the present cause hold your petitioner to be an infringer.'

Prayer for an order restraining complainants from commencing any further actions, either at law or in equity, against any purchaser or user of tanks manufactured or sold by defendant, for infringement of said patents pending the final hearing of this cause; and that complainant be enjoined from prosecuting any of such later suits against customers of defendant, etc.

This petition was supported by an affidavit of P. C. Avery, president of the defendant corporation, showing that on March 27, 1906, he obtained United States letters patent No. 816,059, for a gas tank to handle acetylene gas; that, as he has been advised by his attorneys and believes, his invention does not infringe the claims of the complainant's patents or either of them; and that the defendant is operating as a licensee under his patent, and is shipping tanks over the United States, and that it had before the bringing of this suit built up an extensive and increasing business in the sale of such tanks. Complainant filed an answer to such petition, admitting the bringing of the suits in various circuits, but expressly denying any purpose of annoying or harassing defendant or its customers, contending that it was not able to recover in the two suits instituted in this court all the damages to which it is entitled for the unlawful invasion of its monopoly. Thereupon, on the 25th of October, the defendant filed a second affidavit of P. C. Avery, and gave notice to complainant that it would be used on the hearing of the petition for injunction. This affidavit sets forth the fact that complainant was giving out to the trade certain circulars, and the court is asked to enjoin the complainant from sending out or causing to be distributed said trade circulars. The first circular complained of is dated August 1st, signed by the complainant, and sets out the fact that complainant is the owner of the two patents named in the bill; that the tanks manufactured at Milwaukee by defendant are believed to be infringements of said letters patent; and notifies all persons to abstain from the use or sale of same, and that all who use or sell infringing tanks will be liable to damages. The second circular, dated October 18, 1906, is addressed to the automobile trade, refers to the former circular of August 1st, above described, and then proceeds to give a list of suits already brought by it, whereby it appears that, aside from the suits brought in this court, ten later suits in equity, based upon the complainant's patents, have been brought in other circuits. Then follows a statement that the papers are being prepared for suits against numerous other concerns in different cities, and that the Presto-Lite gas tank is the only one licensed by complainant.

It appears that three or four additional suits were brought by complainants after the petition was filed and before the hearing thereon.

F. A. Geiger and Chamberlin & Wilkinson, for the motion.

Bartlett, Brownell & Mitchell, opposed.

QUARLES, District Judge (after stating the facts).

It is undisputed that the defendants in the ten suits brought by complainant in other circuits are the vendees of the defendant, whom defendant is morally, not legally, bound to protect and defend in this litigation. It further appears that the defendant is manufacturing only one type of gas tank, although of various sizes. So that the issues raised in all the suits will be practically identical. That complainant's patent No. 664,383 was granted on the 25th of December, 1900, which, by mesne assignments, became the property of complainant on the 3d day of June, 1901. The other of complainant's patents, numbered 727,609, was issued on the 12th day of May, 1903, and by assignment became the property of complainant on the 19th day of April, 1904. That, prior to the bringing of the suits in this court, neither of the complainant's patents had been subjected to the test of legal adjudication.

Complainant challenges the power of the court to make the order prayed for. This is naturally the first proposition requiring attention. It is contended that jurisdiction here is limited to the making of such order or decree as may determine the issues raised by the pleadings and that it has no authority to make any order whose purpose is to control the action of either party beyond the territorial limits of the court. The complainant has come into this tribunal seeking equitable relief and has submitted itself to the jurisdiction of the court. The power in such case to proceed in personam against either litigant to protect the jurisdiction, or the subject-matter, or to...