I.T.S. Rubber Co. v. Essex Rubber Co.

• Decision Date: 27 November 1920
• Docket Number: 1008.
• Parties: I.T.S. RUBBER CO. v. ESSEX RUBBER CO.
• Court: U.S. District Court — District of Massachusetts

270 F. 593

I.T.S. RUBBER CO. v. ESSEX RUBBER CO.

No. 1008.

United States District Court, D. Massachusetts.

November 27, 1920

[Copyrighted Material Omitted]

Frederick A. Tennant and Nathan Heard, both of Boston, Mass., and F. O Richey and E. D. Fales, both of Elyria, Ohio, for plaintiff.

Emery Booth, Janney & Varney, of Boston, Mass., and Lucius Varney, of New York City, for defendant.

ANDERSON Circuit Judge.

The defendant moves to dismiss for want of jurisdiction this patent infringement suit, brought by an Ohio corporation against a New Jersey corporation for alleged infringement of the Tufford patent on resilient heels, No. 14,049, reissued January 11, 1916.

The jurisdiction in this district, if any, is grounded on section 48 of the Judicial Code, the relevant parts of which are as follows:

'In suits brought for the infringement of letters patent the District Courts of the United States shall have jurisdiction, in law or in equity, in the district of which the defendant is an inhabitant, or in any district in which the defendant * * * shall have committed acts of infringement and have a regular and established place of business.'

As the defendant is not an inhabitant of this district, unless (1) it has a regular place of business within this district, and (2) has committed at least one act of infringement in this district (compare Westinghouse Electric Co. v. Stanley Electric Co. (C.C.) 116 F. 641), this court is without jurisdiction, even although the defendant may elsewhere have committed acts of infringement. Plaintiff has duly pleaded both grounds of jurisdiction. Defendant admits the requisite place of business here, but denies any act of infringement within the district.

After motion by the defendant for particulars, a stipulation was filed that certain attached heels (Plaintiff's Exhibits 1 and 2, and Defendant's Series A and B) were sold by the defendant in this district, and constituted the sole acts of infringement within this district relied upon to give this court jurisdiction.

The defendant thereupon moved to dismiss, on the ground that it appears on the record thus made that there was no infringement in this district.

The question thus presented is essentially the same as though the plaintiff had in its bill set up its patent with the usual allegations, plus the claim that the defendant had been guilty of infringement by selling within this district certain attached samples of heels. The defendant might, under the old practice, have demurred to such a bill, assigning as cause for the demurrer that it appeared from the bill that the alleged infringing structures were not infringements.

Obviously such brief and summary method of disposing of a patent case--generally distinguished for length, prolixity, and presence of extraneous and immaterial matter-- is not usual. It calls for and has had careful consideration. There seems to be no reason why the principles used in the labor and money saving device of demurrer should not be utilized in patent litigation as well as elsewhere.

Moreover, if the defendant is correct in its contention that, if this motion is sustained, an appeal may (and probably must) take the questions involved directly to the Supreme Court, there are obvious practical advantages in having an early construction of this patent by that court. The case relied on for this contention is W. S. Tyler Co. v. Ludlow-Saylor Wire Co., 236 U.S. 723, 35 Sup.Ct. 458, 59 L.Ed. 808. That was a patent infringement suit, brought in the Southern district of New York by an Ohio corporation against a Missouri corporation. The trial court held that the plaintiff had neither established that it had the requisite place of business in that district, nor had committed an act of infringement by making a sale there. The Supreme Court held that the case was properly before it on appeal, and that certiorari should therefore be denied.

It is difficult to distinguish that case from the case at bar. American Electric-Welding Co. v. Lalance & Grosjean Mfg. Co., 249 F. 968, 162 C.C.A. 166, is another recent case, closely in point, in which Judge Bingham, for the Court of Appeals for this circuit, cites numerous cases concerning appellate jurisdiction, holding that in such case the Court of Appeals has no jurisdiction.

The procedure here invoked is consistent with that adopted by the Court of Appeals for the Seventh Circuit, affirming a decision by District Judge Carpenter, in Bronk v. Charles H. Scott Co., 211 F. 338, 128 C.C.A. 17. In that case, answering interrogatories, the plaintiff admitted that the alleged infringement consisted solely in defendant's manufacture and sale of certain articles identified and described in the interrogatories. The defendant's motion to dismiss, on the ground that the answers disclosed that there was no infringement, was sustained; the court saying:

' * * * The principles that are applicable to a demurrer should be applied, for the reason that appellant's answers to the interrogatories are the same in effect as if she had charged in her bill that appellee's infringement consisted solely in the manufacture and sale of the protectors which were identified and described in the interrogatories.'

In that case pleadings had also put the validity of the patent in issue, and the defendant had tendered the file wrapper and copies of numerous patents of the prior art. But the file wrapper and these patents were disregarded by the court, which disposed of the case on the single issue of noninfringement.

In Krell Auto Grand Piano Co. v. Story & Clark Co., 207 F. 946, 949, 125 C.C.A. 394, is a collection of patent infringement cases in which the scope and function of demurrers are discussed. Compare Lange v. McGuin, 177 F. 219, 101 C.C.A. 389.

There are many cases in which the courts have held that both validity and infringement might be properly determined on demurrer. See American Fiber Chamois Co. v. Buckskin Fiber Co., 72 F. 508, 18 C.C.A. 662, a decision in 1896 by the Circuit Court of Appeals for the Sixth Circuit-- Judges Taft, Lurton, and Hammond. Judge Taft says (72 F. 511, 18 C.C.A. 665):

'The rule is now well settled that a defendant to a patent infringement bill may raise the question on demurrer whether the alleged invention, as disclosed by the specifications of the patent, is devoid of patentable novelty or invention. Richards v. Elevator Co., 158 U.S. 299, 15 Sup.Ct. 831; West v. Rae, 33 F. 45. It is also well settled that, in considering the question of the validity of a patent on its face, the court may take judicial notice of facts of common and general knowledge tending to show that the device or process patented is old, or lacking in invention, and that the court may refresh and strengthen its recollection and impression of what facts were of common and general knowledge at the time of the application for the patent by reference to any printed source of general information which is known to the court to be reliable, and to have been published prior to the application for the patent. Brown v. Piper, 91 U.S. 38. The presumption from the issuance of the patent is that it involves both novelty and invention. The effect of dismissing the bill upon demurrer is to deny to the complainant the right to adduce evidence to support that presumption. Therefore the court must be able, from the statements on the face of the patent, and from the common and general knowledge already referred to, to say that the want of novelty and invention is so palpable that it is impossible that evidence of any kind could show the fact to be otherwise. Hence it must follow that, if the court has any doubt whatever with reference to the novelty or invention of that which is patented, it must overrule the demurrer, and give the complainant an opportunity, by proof, to support and justify the action of the patent office. This is the view which has been taken by the Supreme Court, and the most experienced patent judges upon the circuit. New York Belting & Packing Co. v. New Jersey Car-Spring & Rubber Co., 137 U.S. 445, 11 Sup.Ct. 193; Manufacturing Co. v. Adkins, 36 F. 554; Blessing v. Copper Works, 34 F. 753; Bottle-Seal Co. v. De La Vergne Bottle & Seal Co., 47 F. 59; Industries Co. v. Grace, 52 F. 124; Goebel v. Supply Co., 55 F. 825; Hanlon v. Primrose, 56 F. 600; Dick v. Well Co., 25 F. 105; Kaolatype Co. v. Hoke, 30 F. 444; Coop v. Development Inst., 47 F. 899; Krick v. Jansen, 52 F. 823; Manufacturing Co. v. Housman, 58 F. 870; Davock v. Railroad Co., 69 F. 468; Henderson v. Thompkins, 60 F. 758.'

See, also, the discussion by Judge Blodgett in Manufacturing Co. v. Adkins (C.C.) 36 F. 554.

In Brown v. Piper, 91 U.S. 37, 44, 23 L.Ed. 200, a case that went after a trial on appeal from this district, the court, by Mr. Justice Swayne, said:

'We think this patent was void on its face, and that the court might have stopped short at that instrument, and without looking beyond it into the answers and testimony sua sponte, if the objection were not taken by counsel, well have adjudged in favor of the defendant.'

In Slawson v. Grand St. R.R. Co., 107 U.S. 649, 2 Sup.Ct. 663, 27 L.Ed. 576, the Supreme Court cited with approval the foregoing quotation from Brown v. Piper, and approved the practice of dismissing a patent infringement bill for want of patentability, even when the answer does not allege such defense. Mr. Justice Woods said concerning patents:

'If they are void because the device or contrivance described therein is not patentable, it is the duty of the court to dismiss the cause on that ground whether the defense be made or not.'

In Richards v. Chase Elevator Co., 158 U.S. 299, 15 Sup.Ct. 831, 39 L.Ed. 991, Mr. Justice Brown says:

'While patent cases are

...