Lewis Blind Stitch Co. v. Arbetter Felling Mach. Co.

• Decision Date: 17 October 1910
• Docket Number: 30,043.
• Citation: 181 F. 974
• Parties: LEWIS BLIND STITCH CO. et al. v. ARBETTER FELLING MACH. CO. et al.
• Court: U.S. District Court — Northern District of Illinois

181 F. 974

LEWIS BLIND STITCH CO. et al. v. ARBETTER FELLING MACH. CO. et al.

No. 30,043.

United States Circuit Court, N.D. Illinois, Eastern Division.

October 17, 1910

George T. May, Jr., and Edward Rector, for complainants.

Nathan Heard, for defendant Arbetter Felling Mach. Co.

SANBORN District Judge.

Plea in abatement to the jurisdiction, setting up that the defendant corporation is organized in Maine, but qualified to do business in Illinois, having therein a regular and established place of business and an agent to receive service of process, and upon whom the subpoena was regularly served for the defendant corporation. Defendant Arbetter is an inhabitant of Massachusetts, and Moore of the city of Washington, D.C. Process was not served on Arbetter or Moore nor is objection made on that ground, nor as to the manner of service on the corporation; but the plea raises the question whether the latter can be compelled to answer under the venue clause of the act of March 3, 1887, providing that no civil suit shall be brought in the Circuit or District Court in a district of which the defendant is not an inhabitant. It is conceded that the Arbetter Company is an inhabitant of the district of Maine, under the rule settled in Southern Pacific Co. v. Denton, 146 U.S. 202, 13 Sup.Ct. 44, 36 L.Ed. 942. The suit is in the exclusive jurisdiction of the Circuit Court, brought under section 4915 of the Revised Statutes, to secure the issuance of a patent for an invention. Lewis and Arbetter each claimed priority of invention, and Arbetter's claim was sustained by the Court of Appeals of the District of Columbia, as a result of interference proceedings in the Patent Office between Arbetter and Lewis. Lewis' right having been assigned to the plaintiff company, it seeks to sustain its right to a patent in this action. The sole question is whether the act of 1887 applies to suits in the exclusive jurisdiction of the Circuit Court; Arbetter and Moore being proper, but not necessary, parties under the act of 1839 (section 737, Rev St. (U.S. Comp. St. 1901, p. 587)), and Shields v. Barrow, 17 How. 130, 15 L.Ed. 158. Exclusive jurisdiction in patent cases was vested in the Circuit Court by the act of July 8, 1870, and earlier statutes (section 711, Rev. St (U.S. Comp. St. 1901, p. 578)); that act not providing in what district suit should be brought, nor otherwise fixing the venue. Section 4915, under which this suit was brought, provides that the court, 'on notice to adverse parties and other due proceedings had,' may adjudge that complainant is entitled to a patent.

The original judiciary act of 1789 prescribes the jurisdiction of the federal courts, and their procedure. Most of its provisions are still in force, scattered through the Revised Statutes. By section 9 the jurisdiction of the District Court is fixed, exclusive, concurrent with the Circuit Court, and concurrent with the state courts. All its provisions are still in force, with some modifications. Section 11, superseded by the act of March 3, 1875, and that in turn by the act of March 3, 1887, relates to the jurisdiction of the Circuit Court, concurrent with the state courts, in all the civil cases referred to in section 11, exclusive criminal jurisdiction where the fine exceeded $100, and jurisdiction concurrent with the District Court of all other federal crimes. Section 11 also fixes the venue or district where suit should be brought, in all civil suits in both District and Circuit Courts, and in both the original and concurrent jurisdiction given by sections 9 and 11. Section 11 in its original shape, and as superseded by the later acts, is as follows; changes introduced in 1875 being indicated by parentheses, and in 1887 by brackets: 'The Circuit Courts shall have original cognizance, concurrent with the courts of the several states, of all suits of a civil nature at common law and in equity, where the matter in dispute exceeds, exclusive of (interest and) costs, the sum or value of five hundred (two thousand) dollars, (and arising under the Constitution or laws of the United States, or treaties made, or which shall be made, under their authority), or in which the United States are plaintiffs or petitioners, or an alien is a party (or there is a controversy between citizens of a state and foreign states, citizens or subjects) (in which the matter in dispute exceeds, exclusive of interest and costs, the sum or value aforesaid) or the suit is between a citizen of the state where the suit is brought, and a citizen of another state ((or in which there shall be a controversy between citizens of different states)) (in which the matter in dispute exceeds, exclusive of interest and costs, the sum or value aforesaid) ((or a controversy between citizens of the same state claiming lands under grants of different states)). * * * But no person shall be arrested in one district for trial in another, in any civil action before a District or Circuit Court. ((Last sentence repeated in both later acts.)) And no civil suit shall be brought before either of said courts against an inhabitant of the United States ((against any person)) by any original process ((or proceeding)) in any other district than that whereof he is an inhabitant, or in which he shall be found at the time of serving the writ (in any other district than that whereof he is an inhabitant, or in which he shall be found at the time of serving such process or commencing such proceeding, except as hereinafter provided) (in any other district than that whereof he is an inhabitant, but where the jurisdiction is founded only on the fact that the action is between citizens of different states, suit shall be brought only in the district of the residence of either the plaintiff or defendant).'

Section 9 of the act of 1789 contains the following:

'The District Courts shall also have cognizance, concurrent with the courts of the several states, or the Circuit Courts, as the case may be, of all causes where an alien sues for a tort only in violation of the law of nations or a treaty of the United States. And shall also have cognizance, concurrent as aforesaid, of all suits at common law where the United States sue, and the matter in dispute amounts, exclusive of costs, to the sum or value of one hundred dollars. And shall also have jurisdiction, exclusively of the courts of the several states, of all suits against consuls or vice consuls.'

By comparison of these two sections it is readily seen that in civil suits the Circuit Court is given jurisdiction concurrent with state courts of the cases mentioned in both sections, and that the District Court is given like concurrent jurisdiction in suits by aliens for certain torts and actions at law by the United States, and exclusive jurisdiction of suits against foreign consuls and vice consuls. The conclusion is therefore irresistible that, when section 11 provides that no civil suit shall be brought in either the District or Circuit Court except where defendant inhabits or is found, it refers to the concurrent jurisdiction of both courts, and the concurrent jurisdiction of the District Court in actions at law by the United States. And it is equally logical to say that this clause refers both to the concurrent state and federal jurisdiction of the Circuit Court, and the concurrent federal jurisdiction of the same court in the two cases referred to in section 9, because the words 'no civil suit' most clearly include all those mentioned. Nor is there anything in the acts of 1875 and 1887, or either of them, which in any way interferes with these conclusions, so far as cases covered by the original statute are concerned, because the provisions of section 9, with slight modification, are still in force. But the question which arises in this particular case, relating to exclusive federal jurisdiction not referred to in the act of 1789, is quite a different one.

That question may be thus stated: Does the first section of the act of 1887, superseding section 11 of the original judiciary act and the first section of the act of 1875, in giving jurisdiction of cases arising under the federal Constitution, law, or treaty (also given by the act of 1875), involving more than $2,000, and fixing the district of suit in such cases, refer to suits authorized by special acts of Congress, of which the Circuit Court is given exclusive jurisdiction without regard to the amount in controversy? This question is squarely answered in the negative, in a case not relating to place of suit, by Elgin National Watch Co. v. Illinois Watch Case Co., 179 U.S. 665, 21 Sup.Ct. 270, 45 L.Ed. 365. In that case the act of 1887 was held inapplicable to trade-mark cases because the trade-mark act of 1881 (Act March 3, 1881, c. 138, 21 Stat. 502 (U.S. Comp. St. 1901, p. 3401)) gave federal jurisdiction without regard to the amount in controversy. Identical reasoning may be fairly applied to suits to establish patents under section 4915, which gives federal jurisdiction based on subject-matter alone, and where there is no definite amount in controversy. Indeed, it often happens that a suit under section 4915 is merely an administrative proceeding, with no adverse party, being merely a continuation of the patent application.

Every case ever decided by the Supreme Court, except Butterworth v. Hill, 114 U.S. 128, 5 Sup.Ct. 796, 29 L.Ed. 119, where the point was not necessary to the conclusion reached, agrees with the Watch Companies Case cited. As early as 1825 it was held that the venue clause of section 11 of the act of 1789 did not apply to suits in rem in admiralty. Manro v. Almeida, 10 Wheat. 473, 6 L.Ed. 369. The same rule was held again in 1873, in Atkins v. Fiber Disintegrating Co., 18 Wall. 272, 21 L.Ed. 841, and...