KNAPP-MONARCH COMPANY v. Dominion Electric Corp.

• Decision Date: 20 July 1966
• Docket Number: No. 15411.,15411.
• Citation: 365 F.2d 175
• Parties: KNAPP-MONARCH COMPANY, Plaintiff-Appellant, v. DOMINION ELECTRIC CORPORATION and Steinmetz & Kelly, Inc., Defendants-Appellees.
• Court: U.S. Court of Appeals — Seventh Circuit

365 F.2d 175 (1966)

KNAPP-MONARCH COMPANY, Plaintiff-Appellant, v. DOMINION ELECTRIC CORPORATION and Steinmetz & Kelly, Inc., Defendants-Appellees.

No. 15411.

United States Court of Appeals Seventh Circuit.

July 20, 1966.

Norman Lettvin, Seymour Rothstein, Chicago, Ill., for plaintiff-appellant, Bair, Freeman & Molinare, Chicago, Ill., of counsel.

Bruce B. Krost, Cleveland, Ohio, Carl S. Lloyd, Ronald L. Engel, Chicago, Ill., for defendants-appellees, Woodling, Krost, Granger & Rust, Cleveland, Ohio, Kirkland, Ellis, Hodson, Chaffetz & Masters, Chicago, Ill., of counsel.

Before KNOCH, CASTLE and SWYGERT, Circuit Judges.

SWYGERT, Circuit Judge.

This appeal presents for our consideration a situation which in many respects is similar to that presented in Knapp-Monarch Co. v. Casco Products Corp., 342 F.2d 622 (7th Cir.), cert. denied, 382 U.S. 828, 86 S.Ct. 64, 15 L.Ed.2d 73 (1965), in which we affirmed the dismissal of a suit for patent infringement against a manufacturer for lack of proper venue under 28 U.S.C. § 1400(b) and held that a manufacturer's representative's infringement was de minimis.

Knapp-Monarch Company is the owner of United States Letters Patent No. 3,038,269 for a steam and spray iron. It brought the instant action for patent infringement against Dominion Electric Corporation, an Ohio corporation, and Steinmetz & Kelly, Inc., an Illinois corporation, seeking damages and injunctive relief.

The defendants first moved to dismiss the complaint for want of venue and jurisdiction. They later supplemented the motion with an alternative motion to transfer the action under 28 U.S.C. §§ 1404(a), 1406(a), in which it was requested that "if the complaint is not dismissed * * *, this action be transferred to the United States District Court for the Northern District of Ohio, Eastern Division." The district court denied both motions. Thereafter, the defendants filed an answer denying infringement and a counterclaim for a declaratory judgment, requesting that the plaintiff's patent be declared invalid and not infringed and other relief. The counterclaim contained the preliminary statement "reserving and repeating their objections to the jurisdiction of the Court over the Complaint * * * the Defendants counterclaim for a declaratory judgment. * * *" The defendants also referred to their objections to venue and jurisdiction in the counterclaim by stating that declaratory relief was requested only "should the Court take and exercise jurisdiction over the Complaint * * * notwithstanding the objections * * * raised and reserved by Defendants."

Subsequently this court's decision in Knapp-Monarch Co. v. Casco Products Corp., supra, was rendered. Shortly thereafter the defendants renewed their motion to dismiss the complaint for want of venue and jurisdiction. The district court, considering the Casco case controlling, dismissed the complaint. The court also dismissed the counterclaim over the objection of the plaintiff. This appeal followed.

From the pleadings and affidavits filed therewith, a pretrial deposition, answers to interrogatories, and responses to a request for admissions, the following facts appear in the record.

Dominion has its principal place of business in Mansfield, Ohio, where it manufactures a steam and spray iron which allegedly infringes plaintiff's patent. It neither conducts any maunfacturing activity nor maintains an office in Illinois.

Steinmetz is a manufacturer's representative for several manufacturing concerns, including Dominion, with its office in the Merchandise Mart in Chicago. It began its relationship with Dominion in 1926 and has continued to represent the company since the filing of the instant suit. It solicits orders for the accused irons in the Chicago area. These orders are sent to the home office of Dominion which accepts and fills them. Steinmetz has charge of preprogramming Dominion's advertising allowances to customers in the Chicago area, is responsible for the budgeting of such expenditures, and represents Dominion in working out agreements with customers for cooperative advertising. Moreover, Steinmetz displays in its Chicago office sample irons manufactured by Dominion, follows up on complaints on behalf of Dominion, contracts on the latter's behalf for an advertisement in the Chicago classified telephone directory, and directs calls for repair service to the repair service station selected by Dominion. Steinmetz sold three sample irons after the filing...