Dimet Proprietary v. Industrial Metal Protectives
Decision Date | 28 October 1952 |
Docket Number | Civ. No. 1420. |
Citation | 109 F. Supp. 472 |
Parties | DIMET PROPRIETARY, LIMITED v. INDUSTRIAL METAL PROTECTIVES, Inc. |
Court | U.S. District Court — District of Delaware |
Caleb S. Layton, of Wilmington, Del., of Richards, Layton & Finger, Wilmington, Del., and Oscar A. Mellin, of San Francisco, Cal., for plaintiffs.
E. Ennalls Berl, Wilmington, Del., of Berl, Potter & Anderson, Wilmington, Del., and H. A. Toulmin, of Dayton, Ohio, for defendant.
This is an action brought by Dimet Proprietary, Ltd., a corporation of Victoria, Australia, and Amercoat Corporation, a corporation of the State of California, and being respectively the owner and exclusive licensee of two certain U. S. Letters Patent, No. 2,440,969 and No. 2,462,763. The defendant, Industrial Metal Protectives, Inc., is a corporation of the State of Delaware. The complaint alleges two causes of action. The first cause of action is substantially an allegation of patent infringement of Letters Patent No. 2,462,763. The second cause of action allegedly seeks a declaratory judgment that U. S. Letters Patent No. 2,509,875 owned by the defendant is not infringed by the plaintiffs and is invalid and void. The first cause of action consists of nine paragraphs distinguished by Roman numerals, and the second cause of action consists of thirty-one paragraphs set out in Arabic numerals.
The present questions arise from three several amended motions of the defendant, viz., (1) a motion under Rule 12(f), Fed. Rules Civ.Proc., 28 U.S.C., to strike certain language from paragraph VIII of the first cause of action and a portion of the prayer of the first cause of action; (2) a motion for summary judgment under Rule 56 as to the second cause of action; and (3) a motion to dismiss under Rule 12(b) and being applicable to many or all of the paragraphs of the second cause of action. These motions will be considered in the order named.
In paragraph VIII of the first cause of action after an allegation of infringement, the plaintiff adds, "In knowing, wanton and deliberate disregard to the rights of the plaintiffs in the premises." In prayer (e) of the first cause of action the plaintiff prays the allowance of counsel fees and adds "Due to the wanton and deliberate character of the infringement." It is the quoted words that the defendant seeks to strike because, as it is argued, such words are immaterial, impertinent and scandalous.
The defendant contends that any matter is impertinent which "consists of any allegation not responsive or relevant to the issues involved in the action" and cites Best Foods, Inc. v. General Mills, Inc. in this court.1 The defendant contends that the sole issue is whether or not the patent was infringed and that the quoted words are not relevant to that issue. Motions to strike are somewhat strictly considered and, at times, will be denied even when literally within the provisions of Rule 12(f) where there is no showing of prejudicial harm to the moving party.2
Reasons seem to exist for refusing the motion to strike. The damages recoverable by an owner of a patent against an infringer in an action under 35 U.S.C. Sec. 67 seem to be the "actual damages sustained" and damages recoverable against an infringer in an action under 35 U.S.C. Sec. 70 are denominated "general damages."
The words objected to have often been used in other proceedings as the basis for exemplary or punitive damages. Each of the sections just mentioned includes the power of the court to increase the awarded damages to an amount not exceeding three times the damages as found and such language has induced some courts to call the increase of damages as "exemplary or punitive" damages. At this time it is impossible to forecast the circumstances of the case which might require the exercise of the court's discretion and the striking of the language might be an action limiting the future attitude of the court which could not be now determined.
The plaintiff, while not clearly relying upon the quoted words as affecting the question of damages, does claim that such words are material with relation to his claim for attorneys' fees. The question of allowance of attorneys' fees to the prevailing party in a patent infringement case is a question separate and distinct from the question of damages. Ordinarily attorneys' fees will not be specifically granted unless there is evidence of such unfairness or inequitable conduct on the part of the losing party which makes it unjust that the winning party should bear his own counsel fees which prevailing litigants normally bear.3 The words objected to in the first cause of action indicate an intent to request attorneys' fees and if proven and that party prevail might have a tendency to invoke the discretion of the court in the granting of attorneys' fees to the prevailing party.
The motion to strike the quoted words must be refused.
The second cause of action is substantially in the nature of an action for a declaratory judgment adjudging the defendant's patent invalid and not infringed by the patents or process of the plaintiffs. The defendant has filed a motion for summary judgment on the ground that no jurisdiction exists for a declaratory judgment in that there appeared no justiciable threat of infringement or otherwise. Concededly, paragraph 15 is the only portion of the complaint in which there is anything in the nature of an affirmative allegation of any threat. Since the motion for summary judgment is specifically directed to this paragraph 15, it is well to keep its allegations in mind as it is set out in the footnote.4
The defendant has filed 11 affidavits. Ten affidavits are made by officers and agents of the defendant and specifically deny any threat of any kind. The eleventh affidavit shows that the ten affiants were the only persons who could have made a threat if one had been made. The plaintiffs have filed no affidavits and thus the question of the existence of any threat or genuine issue governing the jurisdiction of the declaratory judgment complaint must be determined by the bare allegations of paragraph 15 and the affidavits as filed.
It seems proper to state some concise views having a bearing on the present difficulties and to see if these views are consistent with the holdings of Hart & Co. v. Recordgraph Corp., 3 Cir., 169 F.2d 580, so much relied upon in this proceeding.
When the Rules of Civil Procedure were first effective in 1938 at least three methods were available to a defendant to test the sufficiency of the complaint: (1) He could move to dismiss the action under Rule 12(b); (2) If the pleadings had been closed he could have moved for a judgment on the pleadings under Rule 12(c); (3) He could, with or without supporting affidavits, move for summary judgment under Rule 56. Rule 56 for summary judgment made special provision for supporting and opposing affidavits. Rules 12(b) and 12(c) made no specific mention of such affidavits. It is quite apparent that since judgments on the pleadings, under Rule 12 (c), are heard on the pleadings, no extraneous matters are considered. It is equally apparent that motions made under certain paragraphs of 12(b), viz., sub-paragraphs 2 to 5, and 7, contemplate extraneous affidavits or other matters and are not determined on the pleadings alone. Obviously, motions under some of these provisions could not be determined on the complaint alone. Many courts had allowed affidavits to be filed and considered especially with reference to motions under Rule 12(b) (6) and in order to formalize the procedure an amendment, effective March 19, 1948, provided that motions made under Rule 12 (b) (6) in which matters outside the pleadings are presented and not excluded by the court, such motions are treated as motions for summary judgment and disposed of as provided in Rule 56.
This, then, brings me to a consideration of Hart & Co. v. Recordgraph Corp., 3 Cir., 169 F.2d 580, so material in this case. An understanding of the case can best be had by a knowledge of the underlying facts.
In the District Court, 73 F.Supp. 146, Hart had filed a declaratory judgment action concerning the validity and infringement of certain patents. The complaint alleged in most general terms that the defendant had charged the plaintiff with infringement but had failed to institute any action based on such infringement. Pursuant to interrogatories of the defendant directed to the plaintiff and seeking the foundation of the threat or "controversy," the plaintiff relied upon an oral conversation between one Murray, treasurer of the defendant, and one Weber at a stipulated place in Washington when they alone were present. Murray filed an affidavit giving his view of the exact facts of the interview and explicitly denied any threat of any kind. Weber filed no affidavit concerning the interview and no discovery process obtained his version and no affidavit was filed by any one having a personal knowledge of the facts of the interview other than Murray. The plaintiff filed two affidavits from William H. Taylor, Jr. and Thomas C. Smith alleging conversations with Weber and purporting to give the substance of such conversations from which it was contended that Weber's recollection of the interview with Murray would be at variance with Murray's statement. The District Court did not consider that these two affidavits had evidential value but considered them as merely "hearsay" and not within the spirit of Rule 56(e) where, in supporting or opposing affidavits for summary judgment, it is required that such affidavits be made on personal knowledge and show affirmatively that the affiant was competent to testify as to the matters stated therein. The District Court then had before it only the general threat alleged in the complaint, localized and specified to one interview in Washington and, as it was thought, only...
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