General Radio Company v. Superior Electric Company, 5805.
| Decision Date | 25 August 1961 |
| Docket Number | No. 5805.,5805. |
| Citation | 293 F.2d 949 |
| Parties | GENERAL RADIO COMPANY, Plaintiff, Appellant, v. SUPERIOR ELECTRIC COMPANY, Defendant, Appellee. |
| Court | U.S. Court of Appeals — First Circuit |
Robert H. Rines, Boston, Mass., with whom David Rines and Rines & Rines, Boston, Mass., were on brief, for appellant.
William W. Rymer, Jr., Boston, Mass., with whom Stephen H. Philbin, New York City, and Ernest M. Junkins, Bridgeport, Conn., were on brief, for appellee.
Before WOODBURY, Chief Judge, and HARTIGAN and ALDRICH, Circuit Judges.
The appellant, General Radio Company, is a Massachusetts corporation and the owner of United States Patent No. 2,949,592 for "Adjustable Transformer With Stabilized Contact Track." The appellee The Superior Electric Company, is a Connecticut corporation charged by General with infringing its patent.
Litigation between the parties began on October 4, 1960, with the filing by Superior of a complaint against General in the United States District Court for the District of New Jersey praying for a judgment declaring General's patent invalid and void, but if valid, not infringed. Three days later, on October 7, 1960, General initiated the case at bar by filing a complaint against Superior for infringing its patent and for unfair competition in the United States District Court for the District of Massachusetts. On October 25, General filed its answer in the New Jersey litigation and with its answer a counterclaim for unfair competition. On October 28 Superior filed a motion to dismiss the suit pending against it in Massachusetts "on the grounds of lack of jurisdiction of the subject matter and improper venue; or alternatively, to stay proceedings," and filed affidavits in support of its motion. General filed an affidavit in opposition and the motion came on for hearing orally and on briefs in the court below on November 30, 1960. After the hearing the court filed the following memorandum:
A motion by counsel for the plaintiff to amend General's complaint to allege the jurisdictional amount of $10,000 and for rehearing was filed on November 30, but, without acting on the motion, the court entered judgment on December 19 dismissing the "action" on defendant's motion in accordance with its memorandum of November 30 quoted above. Motions by the plaintiff to alter or amend the judgment, for relief from the judgment and to vacate it were denied and the plaintiff thereupon took the present appeal.
The affidavits submitted in support and the affidavit submitted in opposition to the defendant's motion to dismiss for lack of venue disclose the following facts.
Superior's main office and manufacturing plant are located in Bristol, Connecticut. In Massachusetts it maintains an office staffed with a salesman who describes himself as a "sales engineer" and gives as his title "District Sales Manager," and a secretary. The salesman solicits orders for Superior's products in "the part of Massachusetts, New Hampshire, Vermont, Rhode Island and Maine not covered by a sales representative from Bristol," and in connection with his sales activities he consults with prospective purchasers as to their requirements and possible changes in design to meet their needs, quotes prices and investigates complaints. He does not service the alleged infringing transformers manufactured by Superior. All service complaints after investigation are referred to Superior in Bristol for action.
When the salesman obtains an order he directs the customer to address it to Superior at Bristol, which is the only place where the order can be acknowledged and accepted. If an order comes in directed to the Massachusetts office the salesman forwards the order to Bristol since he has no authority to acknowledge or accept it and notifies the customer to change the address to Bristol. Invoices are sent from Superior's office in Bristol and payment is made to that office. Superior has no bank account in Massachusetts, does no warehousing in Massachusetts, and does not stock any products in Massachusetts. In its Massachusetts office it maintains only a supply of literature relating to its products, including the alleged infringing transformer.
Superior displays its name on the door of its Massachusetts sales office, on the directory in the main hallway of the building in which its office is located and on the outside of the building itself. Its name and address are listed in the local telephone directory and also the Yellow Pages carrying advertising.
On these facts we think the court below correctly dismissed the plaintiff's complaint for lack of venue insofar as it claims patent infringement.
In Fourco Glass Co. v. Transmirra Products Corp., 1957, 353 U.S. 222, 229, 77 S.Ct. 787, 792, 1 L.Ed.2d 786, the court, reaffirming its decision in Stonite Products Co. v. Melvin Lloyd Co., 1942, 315 U.S. 561, 62 S.Ct. 780, 86 L.Ed. 1026, held categorically that § 1400(b) of Title 28 U.S.C. quoted in the margin1 "is the sole and exclusive provision controlling venue in patent infringement actions, and that it is not to be supplemented by the provisions of 28 U.S.C. § 1391(c)."
Certainly Superior does not "reside" in Massachusetts. Its corporate residence is clearly Connecticut. The question therefore is whether the facts recited in the affidavits establish the alternative basis for venue, that is, whether the facts establish that Superior "has committed acts of infringement and has a regular and established place of business" in Massachusetts.
These latter requirements for venue are conjunctive. Both must be met to confer venue; if either is lacking venue fails. Since we think controlling authority establishes that on the facts disclosed in the affidavits Superior did not have a regular and established place of business in Massachusetts within the meaning of the patent venue statute, there is no need for us to consider whether it "has committed acts of infringement" in that district.
The wording of the present venue statute differs substantially from the wording of its predecessor, § 48 of the Judicial Code, 28 U.S.C. (1940 E...
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