Jefferson Electric Co. v. Sola Electric Co.
| Decision Date | 22 July 1941 |
| Docket Number | No. 7534.,7534. |
| Citation | 122 F.2d 124 |
| Parties | JEFFERSON ELECTRIC CO. v. SOLA ELECTRIC CO. |
| Court | U.S. Court of Appeals — Seventh Circuit |
Lynn A. Williams, Leslie W. Fricke, and Carroll J. Lord, all of Chicago, Ill., for appellant.
Thomas H. Sheridan, of Chicago, Ill., for appellee.
Before EVANS, SPARKS, and MAJOR, Circuit Judges.
Appellee filed its motion to dismiss an appeal from an order of the District Court dismissing appellant's counterclaim filed in appellee's suit to collect royalties alleged to be due under a patent license agreement. By the counterclaim, defendant-appellant sought a declaratory judgment holding invalid certain claims of the patent under which it held the license agreement.
As grounds for its motion to dismiss, appellee asserts that the order from which the appeal was taken is not an appealable one, being an interlocutory one which neither granted, denied, nor dissolved an injunction. It cites the case, General Electric Co. v. Marvel Rare Metals Co., 287 U.S. 430, 53 S.Ct. 202, 77 L.Ed. 408, where the Court held that an order dismissing a counterclaim in a patent infringement suit was an interlocutory one, appealable in that case, however, inasmuch as it denied an injunction. Appellant replies that the order from which it appealed was a final judgment or decision, the enforcement of which was not stayed, which finally adjudicated the rights of the parties as to the separate and independent cause of action presented in the counterclaim.
Appellee sued appellant for an accounting of royalties alleged to be due under the provisions of a license agreement entered into between them, by which appellee licensed appellant to manufacture, use and sell transformers under certain patents, Nos. 1,777,256, to Daley, et al., and 1,786,422, also to Daley, et al. The license agreement included the following, among other provisions:
10. "The Jefferson Company agrees that it will bring and diligently prosecute such suits for infringement of the patents under which this license is granted as may reasonably be necessary for enforcing those patents and preventing unlicensed competition."
11b. "In the event that any of the claims of any Letters Patent under which a license is granted hereunder are held in any suit for infringement to be invalid or not infringed, or are awarded to another by a court of last resort or by a lower court or tribunal of competent jurisdiction from whose judgment no appeal is taken or certiorari granted within the period allowed therefor, then with respect to any claim so held to be not infringed the construction placed upon the claim by such court shall be followed with respect to acts occurring after the date of entry of the judgment or decree of such court or the issuance of the mandate, and with respect to any claims held invalid or awarded to another, the licensee shall be relieved from including in its reports hereunder transformers shipped, and acts performed, after the date of entry of the judgment or decree, or the issuance of the mandate of such court or tribunal, covered only by such claims, provided, however, that if there are two or more such final judgments, decrees, or mandates with respect to the same claim, the one more favorable to the claim shall be followed if, and so long as there is reasonable ground to believe that that judgment, decree or mandate is correct."
As grounds for the declaratory judgment prayed in its counterclaim, appellant sets up the facts that appellee, in March, 1936, sued the France Manufacturing Company in Ohio for infringement of Patent No. 1,777,256, relying originally upon claims 1 to 5 inclusive, 7, 8, and 12 to 21,...
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...Draft of Proposed Amendments to Rules of Civil Procedure, May, 1945, 62, 63. It is true that earlier Jefferson Electric Co. v. Sola Electric Co., 7 Cir., 122 F.2d 124, had held dismissal of such a counterclaim to be a final order; but as pointed out in the cases and authorities cited, the c......
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Winsor v. Daumit
...have been prior to amendment of the rule is, in view of the revision, wholly immaterial. Hence, our decision in Jefferson Electric Co. v. Sola Electric Co., 7 Cir., 122 F.2d 124 is irrelevant to the question now presented. At the time of that decision the trial court was not required, as it......