Cornell v. Chase Brass & Copper Co.

• Decision Date: 18 February 1943
• Citation: 48 F. Supp. 979
• Parties: CORNELL v. CHASE BRASS & COPPER CO., Inc.
• Court: U.S. District Court — Southern District of New York

48 F. Supp. 979

CORNELL v. CHASE BRASS & COPPER CO., Inc.

District Court, S. D. New York.

February 18, 1943.

Henry J. Lucke and A. K. Wing, both of New York City, for plaintiff.

Frederick S. Duncan and Seymour Scott Jackson, both of New York City, and H. A. Toulmin, Jr., of Dayton, Ohio, for defendant.

RIFKIND, District Judge.

I. Pleadings.

This action was commenced in June, 1941, as a conventional patent infringement suit seeking both an injunction and an accounting. The answer put in issue the validity of the patent and the infringement. By the time the cause was reached for trial the pleadings had lost that convenient simplicity. In an amended answer defendant added appropriate allegations under the Declaratory Judgment Act of 1934, 28 U.S.C.A. § 400, and a prayer that the patent in suit be adjudged invalid and not infringed. The amended answer further alleged that three groundless suits for the infringement of the same patent, had, theretofore, been instituted by American Radiator Company, assignee of the patent by assignment from the plaintiff, that the said patent had since been reassigned to the plaintiff, that the suits had been dismissed without trial and without prejudice, that plaintiff was at all times the beneficial owner of the patent and controlled the suits brought in the name of American Radiator Company and that the instant action was, therefore, barred by the provisions of Rule 41(a) of the Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c.

The amended answer further alleged that the aforementioned suits were instituted by the "wrongful, malicious and willful conduct of the plaintiff herein for the purpose of harassment and vexation of the defendant and has caused this defendant unnecessary and great expense" for which defendant demanded that plaintiff be directed to account and that plaintiff be enjoined from such conduct in the future.

This amended answer elicited a reply which contained denials and allegations of a conspiracy on part of defendant and others to injure plaintiff in his business and employment to his damage, and closed with a prayer for reference to a master to take an accounting of the amount of such damage.

The reply was followed by a second amended answer which made some changes in the patent references.

On June 3, 1942, plaintiff served an amended reply substantially like the first reply except that the allegations of conspiracy and damage were separately stated and denominated a "counterclaim".

On June 5, 1942, defendant filed an answer to plaintiff's "counterclaim" admitting the allegations of diversity of citizenship and otherwise denying the remaining allegations. On June 10, 1942, the trial of the issues to the court was begun. On June 19, 1942, the last day of the trial defendant asked leave to serve an amended answer to plaintiff's "counterclaim", pleading the statute of limitations. Upon that, decision was reserved.

It is plain that we have more pleadings than is permitted by Rule 7, Federal Rules of Civil Procedure. Subdivision (a) provides: "There shall be a complaint and an answer; and there shall be a reply, if the answer contains a counterclaim denominated as such; * * *. No other pleading shall be allowed, except * * *." The exceptions are not here relevant. This language makes it entirely clear that only an answer may contain a counterclaim and that the reply is the final pleading.

In the instant case the plaintiff's "counterclaim", alleged in its reply, could not have survived a motion to strike. However, no such motion was made. Had the so-called "counterclaim" been stricken there would have been no occasion for defendant's "answer to the counterclaim" and for its application to file an amended answer to such "counterclaim".

By common consent the issues joined by these illegitimate pleadings have been tried. Under the circumstances it is preferable that the parties have a decision on the merits. I have, therefore, decided to treat the plaintiff's so-called counterclaim as an amendment to its complaint, alleging an additional cause of action, and the defendant's answer thereto as an amendment of its answer.

In view of all the circumstances, defendant's application for leave to plead the statute of limitations should be granted, Rule 15, Federal Rules of Civil Procedure.

Defendant's plea that the claim for patent infringement is barred under Rule 41(a) (1) is without merit. The facts briefly are these: The patent here in suit has thrice before been the subject matter of a bill of complaint in this court. In the first of these, the plaintiff was American Radiator Company and the defendant was a corporation bearing a name similar to that of the present defendant. The action was dismissed on consent on March 13, 1936. Clearly, that dismissal has no relationship to the present action within the scope of Rule 41(a). On March 17, 1936, another action was commenced by American Radiator Company as plaintiff against the present defendant. That action was dismissed pursuant to a settlement agreement between the parties thereto and the present plaintiff, dated June 18, 1937. On September 23, 1938, American Radiator Company instituted a third suit against the defendant herein. That action was discontinued on April 16, 1940, by a stipulation between the parties to the effect that such discontinuance should be "without prejudice to the bringing of another action based on any of the claims and matters included in the above entitled action".

Assuming that the present plaintiff was the real party in interest in the American Radiator Company suits and that the previous dismissals were operative against him, the defendant has still failed to bring this suit within the scope of the language of Rule 41(a). That rule distinguishes between dismissals by notice and dismissals by stipulation. A notice or a stipulation of dismissal which is silent on the question of prejudice is made to operate without prejudice. After one dismissal by plaintiff the Rule provides that only a dismissal by notice shall operate as an adjudication There is nothing in the Rule to indicate the parties may not, in such event, expressly stipulate that the dismissal shall be without prejudice. This view of the Rule makes it unnecessary to determine at this stage whether in fact the plaintiff herein was the real party in interest in the prior actions.

II. The Patent.

The patent in suit is No. 2,025,973, issued December 31, 1935, to American Radiator Company, assignee from Edward S. Cornell, Jr., the plaintiff herein. The patent is for a hollow wrought metal body and for a method of producing it, embracing 31 claims. Only 7 of these are relied on by plaintiff and these are Nos. 1, 2, 3, 4, 5, 6 and 8. While the claims relating to the article of manufacture and the claims relating to method are separately stated there is an intimate relationship between them, perhaps an indissoluble relationship. This becomes evident from the language of the patent. Thus the patent declares:

"Further, said invention has for its object to provide an article * * * formed as an integral structure of copper and possessing inherent distinctive properties resulting from the particular mode or method of manufacturing the article * * *". Page 1, column 1, line 20.

"Further, said invention has for its object to provide an article * * * in which the angularly related portion thereof, * * * is formed by displacement of metal laterally from the body of the article by cold plastic deformation * * *". Page 1, column 2, line 4.

In support of the patent application plaintiff's attorney urged that, "The method claimed will produce only the product claimed and the claimed product can only be produced by the method claimed." Exhibit 240, page 26.

The article for which invention is claimed is illustrated by a copper tee of the kind used to make connections between metal tubes, having the characteristics described in the claims. The method for which invention is claimed is the mode by which that article is produced and endowed with the characteristics attributed to it.

III. Infringement.

My first inquiry will be directed to the question whether the defendant has infringed the method claim. The only method claim relied on is No. 8, which reads as follows: "8. The method of producing a lateral branch tubular fitting of cold wrough(t) metal predominantly of copper content, which comprises subjecting in cold state a hollow cylindrical blank of metal predominantly of copper content to endwise pressure to cylindrically form the end portions of the blank and displace metal from the blank intermediate the end portions as a solid mass laterally of the blank and forming such displaced metal into a lateral branch the wall of which has a cubical content exceeding the cubical content of the zone defined at its outer boundary by the outer periphery of the lateral branch and having a wall thickness equal to that of the body."

The tools employed in practicing the method of the patent are illustrated by drawings and consist essentially of (1) a split die composed of two similarly shaped halves, in each of which there is a recess, so arranged that when the two halves are brought together, the recesses will define the exterior shape and contour of the tee, and (2) punches and mandrels whose shape and size correspond to the desired inner contour of the tee and which are introduced into the die through openings provided for the purpose.

The method is described in substance as follows: "In producing a T according to my invention and method I preferably employ a tubular blank 15 composed of metal of the character above described which has been partially worked by drawing so that the grain structure has a directional trend longitudinally of the blank. * * * The blank 15 is then placed into the die halves 10a * * * and the two die halves are brought together and securely clamped in any convenient manner placed in a...