Japan Gas Lighter Association v. Ronson Corp.

Decision Date15 July 1966
Docket NumberCiv. A. No. 721-65.
Citation257 F. Supp. 219
PartiesJAPAN GAS LIGHTER ASSOCIATION, Kanamaru Shoten, Ltd., and Japan Gas Lighter Corp., Plaintiffs, v. RONSON CORPORATION and LaNationale, S. A., Defendants.
CourtU.S. District Court — District of New Jersey




Carpenter, Bennett & Morrissey, by Stanley Weiss, Newark, N. J., for plaintiffs; Stitt & Hemmendinger, Washington, D. C., by Noel Hemmendinger, Washington, D. C., Semmes & Semmes, Washington, D. C., by David H. Semmes, of counsel.

Shanley & Fisher, by David S. Cramp, Newark, N. J., for defendant Ronson; Pennie, Edmonds, Morton, Taylor & Adams, New York City, by Frank F. Scheck, New York City, of counsel.

Stryker, Tams & Dill, by Walter F. Waldau, Newark, N. J., for defendant LaNationale.


COOLAHAN, District Judge:

I. These motions arise from an action brought by plainiffs for a declaratory judgment of patent invalidity and non-infringement. The plaintiffs are the Japan Gas Lighter Association Association, a group of forty-one Japanese manufacturers formed to market lighters; Kanamaru Shoten Ltd., an individual member of the Association; and Japan Gas Lighter Corporation Lighter Corp. an American subsidiary of the Association established to import and sell lighters in this country.

The patents challenged in this suit, U. S. Patents Nos. RE 24,163 and 2,882,940 sometimes known as the "Zellweger Patents" are owned by defendant LaNationale, S.A. Nationale, a Swiss Corporation with its principal place of business in Geneva. In January of 1956, these patents, along with others, were licensed to the defendant Ronson Corporation, a New Jersey corporation with its principal place of business in this State. The two patents in suit relate to a valve structure used to refill the lighters which is discussed more fully below.

Plaintiffs allege an actual controversy has resulted from claims made by Ronson about the scope of these patents and about their infringement. Plaintiffs further allege that this controversy has wrongfully hindered their attempts to market, in this country, lighters incorporating the Association's own patent on filler valve construction, U. S. No. 3,192,971 sometimes known as the "Kanamaru Patent".

Plaintiffs seek a determination that the Zellweger Patents are invalid and that they are not infringed by the Association's valve.

Subject matter jurisdiction arises under the Patent Laws of the United States, 28 U.S.C. § 1338 and the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201, 2202. Venue is predicated on 28 U.S.C. § 1391(c) and (d), and personal jurisdiction on Rule 4(e), Federal Rules of Civil Procedure, and Rule 4:4-4(d), New Jersey Rules of Civil Practice.

Before filing answers to the Complaint, defendants brought the four motions now before the Court:

1) Nationale moves to quash the service and dismiss the complaint as to itself on the ground that it cannot properly be sued within the jurisdiction of this Court.
2) On the assumption Nationale is dismissed, Ronson moves to strike the remainder of the Complaint for failure to join an indispensable party.
3) Ronson moves to dismiss for failure to state a claim upon which relief can be granted.
4) In the alternative, Ronson moves for summary judgment.

The defendants also seek a stay of their depositions being taken. The four motions are considered in turn.


II. Nationale's motion to dismiss challenges "the jurisdiction" of this Court to entertain the suit against it. The thrust of its argument is that under the circumstances alleged only the District Court for the District of Columbia may hear the matter. However, the briefs and oral argument make clear that, in fact, both the ground of improper venue and that of defective personal jurisdiction have been raised and, unfortunately, confused. Therefore, though the ground is well trodden, a brief review of the several facets of "jurisdiction" is useful.

To issue a valid binding judgment this Court must establish both Federal jurisdiction over the subject matter and personal jurisdiction over the defendant. Additionally, the plaintiff must have properly served his adversary with process and have laid venue in a proper District. Chassis-Trak v. Federated Purchases, Inc. 179 F.Supp. 780, 786 (D.N.J., 1960).

Personal jurisdiction refers to the Court's ability to assert judicial power over the parties and bind them by its adjudication. Service of process is the corrollary requirement which sets the Court's personal juridiction in gear. That is, someone amenable to the assertion of jurisdiction cannot be subject to its exercise until he has been properly served. Both that assertion of power and the subsequent service must be statutorily and constitutionally permissible. Due process requires certain ties or contacts between a foreign defendant and the forum which asserts jurisdiction, Hanson v. Denckla, 357 U.S. 235, 78 S.Ct. 1228, 2 L.Ed.2d 1283 (1958); and service reasonably calculated to notify him of the proceeding and afford him an opportunity to appear and be heard. Mullane v. Central Hanover Bank & Trust Co., 339 U.S. 306, 70 S.Ct. 652, 94 L.Ed. 865 (1950).

Subject matter jurisdiction deals with the Court's competence to hear a particular category of cases. In the present matter, no question of subject matter jurisdiction has been raised. Hereinafter, unless otherwise noted, the term "jurisdiction" refers to jurisdiction over the person.

Similarly, the sufficiency of the notice, per se, has not been disputed. After attempts to serve Nationale personally within the District proved fruitless, service was made in Switzerland by registered mail on September 20, 1965. The issue raised in regard to that service pertains to the method employed, rather than to the question of actual notice. See, infra pp. 229-236.

Venue also limits the forums available to the plaintiff. However, it is a doctrine of convenience, not of constitutional jurisdiction. 1 Moore, Federal Practice, 1317 (2d Ed., 1960); Hart and Wechsler, the Federal Courts and the Federal System, 949-951 (1953). Venue deals with the locality of the suit, that is, with the question of which Court, or Courts, of those that possess adequate personal and subject matter jurisdiction may hear the specific suit in question.

The concepts of personal jurisdiction and of venue are closely related, but nonetheless distinct. Olberding v. Illinois Central R. R. Co., 346 U.S. 338, 74 S.Ct. 83, 98 L.Ed. 39 (1953); Polizzi v. Cowles Magazine, Inc., 345 U.S. 663, 73 S.Ct. 900, 97 L.Ed. 1331 (1953).1 The distinction between venue and personal jurisdiction is important precisely because often several district courts are competent to hear the matter, and can assert jurisdiction over the defendant; venue then is decisive as to where the suit may be brought.2 Nationale's blurring of this distinction has impaired its analysis of both requirements.

Venue—The plaintiffs rely on the general venue statute, 28 U.S.C. § 1391. Since Nationale is an alien corporation, venue is proper for it in any district by virtue of the express terms of Subsection 1391(d).3

When an alien and a non-alien are joined as defendants, venue for the entire action is proper in any district where it is correct as to the non-alien defendant, State of Maryland For Use of Mitchell v. Capital Airlines, Inc., 199 F. Supp. 335, 337 (S.D.N.Y.1961;) Ronson has not challenged the venue. Of course, the alien defendant still is afforded some protection with regard to the fairness of locale by the requirements of constitutional jurisdiction and service; and this is true whether Nationale is sued singly or jointly. Ibid.

Since these latter requirements rather than venue become the operative constraints upon suing aliens, the two tests are sometimes telescoped in the earlier decisions into the conclusion that "venue for an alien is proper in any district in which he can be sued." e. g., Vaughan v. Empresas Hondurenas, S.A., 171 F.2d 46, 47 (5th Cir. 1948.) Whatever the accuracy of this characterization before the adoption of § 1391(d), that provision clearly states the present rule for aliens in regard to venue as distinct from personal jurisdiction, namely, that venue is proper anywhere.

In addition to the general venue provision of 28 U.S.C. §§ 1391-1393, other statutes provide special venue limitations for particular types of actions. Some of these are collected in Chapter 87 of Title 28 U.S.C., while others are collocated with the statutory actions to which they pertain in other Titles of the Code.

One of these special statutes, Subsection (b) of 28 U.S.C. § 1400 provides:

"Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business." Emphasis added.

In Fourco Glass v. Transmirra Products Corp., 353 U.S. 222, 77 S.Ct. 787, 1 L.Ed.2d 786 (1957), the Supreme Court ruled that § 1400(b) is the exclusive venue provision for patent infringement suits and is not modified or supplemented by the expansive definition of corporate "residence" in the general venue statute. n. 4.4

The Fourco decision has been cited for the broader proposition that whenever a general venue statute and a special venue provision both apply to the circumstances, the special provision supercedes the general one because it presumably was designed to deal with that particular class of litigation. Leith v. Oil Transport Co., 321 F.2d 591 (3rd Cir. 1963); Roberts Brothers Inc. v. Kurtz Bros., 231 F.Supp. 163 (D.N.J., 1964).

Relying on this doctrine, Nationale contends that special venue statutes covering this lawsuit preclude the plaintiff's use of the general venue provisions §§ 1391(c) and 1391(d).

It relies primarily on Section 293, Title 35 U.S.C., to be dealt with presently....

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