International Nickel Co. v. Martin J. Barry, Inc.

• Decision Date: 15 May 1953
• Docket Number: No. 6579.,6579.
• Citation: 204 F.2d 583
• Parties: INTERNATIONAL NICKEL CO., Inc. v. MARTIN J. BARRY, Inc.
• Court: U.S. Court of Appeals — Fourth Circuit

204 F.2d 583 (1953)

INTERNATIONAL NICKEL CO., Inc. v. MARTIN J. BARRY, Inc.

No. 6579.

United States Court of Appeals Fourth Circuit.

Argued April 17, 1953.

Decided May 15, 1953.

Harry N. Baetjer, Baltimore, Md., and Drury W. Cooper, New York City (Thomas J. Byrne, Jr., John F. Dooling, Jr., and Anthony William Deller, New York City, on the brief), for appellant.

William L. Marbury, Jr., and J. Martin McDonough, Baltimore, Md. (Piper & Marbury, Baltimore, Md., on the brief), for appellee.

Before PARKER, Chief Judge, and SOPER and DOBIE, Circuit Judges.

PARKER, Chief Judge.

This is an appeal from an order staying proceedings in a patent suit in the District of Maryland pending the outcome of a suit instituted prior thereto in the Southern District of New York. Motion has been made to dismiss the appeal on the ground that the order appealed from is not a final order or one granting or denying an interlocutory injunction.

The plaintiff is the International Nickel Company, Inc., which on August 15, 1952, instituted suit in the United States District Court for the Southern District of New York against the Ford Motor Company and the Caswell Motor Company, a dealer in Ford automobiles. The purpose of the suit was to recover damages and obtain an injunction because of alleged infringement by those defendants of plaintiff's patent No. 2,485,760 covering a cast ferrous alloy, known as "Ductile Cast Iron". Answer and counterclaim have been filed in that suit asking that the patent be declared invalid on the prior art and for prior use. Nearly two months after the institution of that suit, on October 6, 1952, plaintiff instituted this suit in the court below asking damages and an injunction against the defendant Martin J. Barry, Inc., a dealer in Lincoln automobiles in the State of Maryland. It is alleged and not contradicted that the total damages recoverable against Barry on account of infringement of the patent up to November 1952 would not exceed the sum of eleven dollars. It is conceded that Ford has agreed to indemnify Barry for any expenses incurred in defending this suit and that attorneys employed by Ford are defending it.

A motion made in the suit in the Southern District of New York to permit Barry to be made a party to that suit and to enjoin the prosecution of the suit here was denied. International Nickel Co. v. Ford Motor Co., 108 F.Supp. 833. Thereafter, the court below passed upon a motion made by defendant for an order staying this action pending further order of the court, or in the alternative transferring it to the Southern District of `New York, and entered order staying it. The stay was granted until the further order of court pending the determination of the New York case. In granting the stay, the trial judge adverted to the reason assigned by counsel for Ford for wishing to try the case in New York, saying:

"The reason assigned is that they regard it as very important on the validity of this patent issue to be able to prove the prior use which they contend would invalidate the patent, and their feeling is that they could best do that in the suit in New York where they would have easy access to the witnesses who would not be within one hundred miles of this Court. I was impressed by the reasons for that position as given by the counsel for Ford with regard to the New York litigation, and therefore I regret that I have to express the view that I think this case should be stayed pending the New York decision, much as I regret to rule it as an exception to the general policy of providing a speedy trial of cases.

* * * * * *

"This Court is willing to give, so far as the Judges are concerned, the extra time that is necessary to try this patent case even though it is apt to be a very burdensome case, as counsel have suggested, and we are willing to do it; but I do not think that there is any reasonable basis for asking the Southern District of New York Judge, who would be sitting there, to try the case and ask that also from a Judge from Maryland. Either one or the other seems to me to be sufficient."

We think it clear that the order staying proceedings in the case is neither a final order nor an order granting or denying an interlocutory injunction. It is merely an interlocutory order stating what the court purposes to do, which may be revoked or superseded at any time. As such, it is clearly not appealable. See City of Morgantown v. Royal Ins. Co., 337 U.S. 254, 69 S.Ct. 1067, 93 L.Ed. 1347; Schoenamsgruber v. Hamburg American Line, 294 U.S. 454, 55 S.Ct. 475, 79 L.Ed. 989; International Refugee Organization v. Republic S. S. Corp., 4 Cir., 189 F.2d 858, 861; Clinton Foods v. United States, 4 Cir., 188 F.2d 289; Jiffy Lubricator Co. v. Stewart-Warner Corp., 4 Cir., 177 F.2d 360; Triangle Conduit & Cable Co., Inc., v. National Electric Products Corp., 6 Cir., 127 F.2d 524; Beckhardt v. National Power & Light Co., 2 Cir., 164 F.2d 199; Phillips v. Securities & Exchange Comm., 2 Cir., 171 F.2d 180; Mottolese v. Preston, 2 Cir., 172 F.2d 308, 309. As said in the case last cited: "It is quite true, as the defendant alleges, that the order is no more than a continuance in the action at bar, and not a modern procedural substitute for a decree in chancery, enjoining the prosecution of an action at law. Therefore it is not within the doctrine of Enelow v. New York Life Ins. Co., 293 U.S. 379, 55 S.Ct. 310...