Goldschmidt Thermit Co. v. Primos Chemical Co.

• Decision Date: 04 August 1915
• Docket Number: 1221.
• Citation: 225 F. 769
• Parties: GOLDSCHMIDT THERMIT CO. v. PRIMOS CHEMICAL CO.
• Court: U.S. District Court — Eastern District of Pennsylvania

225 F. 769

GOLDSCHMIDT THERMIT CO. v. PRIMOS CHEMICAL CO.

No. 1221.

United States District Court, E.D. Pennsylvania.

August 4, 1915

[Copyrighted Material Omitted]

J Addison Abrams, of Philadelphia, Pa., and Charles F. Dane and Livingston Gifford, both of New York City, for plaintiff.

Synnestvedt Bradley, Lechner & Fowkes, of Philadelphia, Pa., for defendant.

DICKINSON District Judge.

It is at least not clear that the status of this case has changed since it was before the court on the prior motion to dismiss the bill. There is, however, practical wisdom in the suggestion made by counsel for defendant that the question of the right, in the assertion of which the defendant is rightfully insistent, should be disposed of at this time in order to save the possible second trial of the case. This is the only justification or excuse even for a discussion which partakes of something of the character of a reargument of the question raised.

At the expense of a somewhat lengthy statement of the principles involved, we will begin at the beginning.

In the absence of any statutes or rules of court affecting the question, a reason or ground for a court of equity refusing, or indeed finding that it lacked, the power to entertain jurisdiction of a bill, was always recognized to exist in the fact (where it was the fact) that an adequate remedy at law existed. In chancery bills there was in consequence always incorporated the averment that the plaintiff had no remedy at law. It might further appear from the bill itself that such a remedy existed. Hence followed the practice of demurrers to bills on this ground, as the existence of such a remedy was an insurmountable obstacle to the maintenance of the bill, and a formal answer was uncalled for. In some jurisdictions rules of practice in equity were adopted which dispensed with the requirement of a formal averment of the absence of a remedy at law, but the existence of such a remedy was still recognized as a defense to the bill, and, if the fact was present on the face of the bill, it was still the practice to meet it with a demurrer. When demurrers were abolished by the equity rules, the same result was reached through the medium of motions to dismiss for want of jurisdiction. A further change was then wrought in some jurisdictions by statutes, and in others by the adoption of equity rules providing that, when the question of jurisdiction on this ground was raised, it should not be disposed of either upon demurrer or motion to dismiss, but the case should be transferred to the law side of the court.

A partial history of the evolution of the practice above outlined as traced through our own equity rules is this:

By the rules in force before those promulgated on November 4, 1912, Rule 21 (198 F. xxiv, 115 C.C.A. xxiv) gave plaintiff the optional right to omit the averment of the absence of a remedy at law, and it was provided that the bill should not be demurrable because of this omission. There was a similar positive provision in the State Equity Rules that the averment should be omitted. Rule 22 (198 F. xxiv, 115 C.C.A. xxiv) of the present rules specifically provides for the situation of the existence of an adequate remedy at law appearing, by the requirement that the case shall be transferred to the law side of the court. This clearly and certainly implies that the bill shall not be dismissed on this ground. The Pennsylvania statute contains a similar provision, and like provisions in many other jurisdictions evidence the general drift of the practice in the direction indicated. This was probably born of a common juridical experience. Rule 29 (198 F. xxvi, 115 C.C.A. xxvi), abolishing demurrers and pleas, gave, it is true, defendant the substituted remedy of a motion to dismiss. This surely, however, does not abrogate Rules 22 and 23 (198 F. xxiv, 115 C.C.A. xxiv), which are specifically applicable to cases which should properly have been made the subject of actions at law.

This point has already been decided; but, inasmuch as the present hearing is in the nature of a reargument of the whole question, we state our adherence to the opinion before expressed that an objection to the maintenance of a bill on this ground must be asserted under Rule 22 or 23, and not under Rule 29.

With this preliminary question out of the way, we come to the legal merits of the position taken by the defendant. We have already found in its favor the principle that the existence of an adequate remedy at law is in itself an answer to a bill in equity, and we have further found the application of this principle to have been confirmed to defendants in the courts of the United States by the quoted provisions of the statutes. Neither of these findings, however, free us from the inquiry of: 'What is an adequate remedy at law? ' The same answer has been made to this question by the courts of every jurisdiction, federal and state. It is that the remedy afforded by an action at law must be full, adequate, and complete. Mere existence of a remedy in the sense of the right to bring an action at law will not of itself suffice, but the remedy afforded by the action must be of the character described.

The application of the principle of reference to the law side of the court is also accompanied with another principle. A case may be of a mixed character respecting the remedies called for, and there may be a commingling of the remedies to which the plaintiff is entitled, some of which may be purely equitable and which can be afforded only through chancery forms of procedure, and others, or at least one other, which may be administered through legal forms.

The principle then applicable is this:

When the right to an equitable remedy exists in a plaintiff and he has filed his bill through and by which a court of equity has taken jurisdiction of his complaint, the court having thus acquired jurisdiction will proceed to a final and full termination of all his rights, notwithstanding the fact that this may involve findings which of themselves could have been made in an action at law. Among these equitable remedies, which are recognized as the right of a litigant to have applied, is the right to an injunction, and in most jurisdictions at least to an accounting, where the accounting is complex and of a character with which a tribunal, made up of a jury, could not be expected to cope. The necessity for discovery also may in itself confer equitable jurisdiction. We have qualified the statement of the proposition bearing upon the jurisdiction of a court of equity on the ground of an accounting, because of the position flatly taken by counsel for the defendant that no equitable jurisdiction on this ground exists in the courts of the United States, at least in patent cases. To complete a general statement of the principles affecting the decision of the question of jurisdiction as between courts of law and in equity, a reference to the statutes on the subject of patents should be added.

The history of all such legislation is succinctly set forth in Root v. Railway, 105 U.S. 189, 26 L.Ed. 975. Its present resting place is in the provision of the statutes...