Mann Manufacturing, Inc. v. Hortex, Inc.

• Citation: 439 F.2d 403
• Decision Date: 08 March 1971
• Docket Number: No. 29837.,29837.
• Parties: MANN MANUFACTURING, INC., Plaintiff-Appellee, v. HORTEX, INC., Defendant, and The B. F. Goodrich Company, Defendant-Appellant.
• Court: United States Courts of Appeals. United States Court of Appeals (5th Circuit)

439 F.2d 403 (1971)

MANN MANUFACTURING, INC., Plaintiff-Appellee, v. HORTEX, INC., Defendant, and The B. F. Goodrich Company, Defendant-Appellant.

No. 29837.

United States Court of Appeals, Fifth Circuit.

March 8, 1971.

John A. Grambling, Hardie, Grambling, Sims & Galatzan, El Paso, Tex., Edgar H. Kent, R. W. Furlong, Boston, Mass., Ernest K. Bean, James R. Lindsay, Akron, Ohio, for defendant-appellant; Robert E. Hillman, Boston, Mass., of counsel.

Joe Christie, El Paso, Tex., for Hortex, Inc.

Gerald C. Galbraith, Robert H. Hoy, Jr., Goodman, Hallmark, Hoy, Akard & Galbraith, El Paso, Tex., Allen David Brufsky, Washington, D. C., for Mann Mfg. Co.; Brufsky, Staas, Breiner & Halsey, Washington, D. C., of counsel.

Before COLEMAN, INGRAHAM and WILKEY,^* Circuit Judges.

WILKEY, Circuit Judge:

The B. F. Goodrich Co. appeals from a temporary injunction of the District Court for the Western District of Texas forbidding Goodrich from bringing on for hearing a certain motion in its patent declaratory judgment action previviously filed against Mann Manufacturing, Inc., in the United States District Court for the Southern District of New York. Goodrich's motion in New York seeks to have Mann's Texas infringement action, to which the temporary injunction is ancillary, consolidated with the New York action, and to have the New York court's injunction prohibiting Mann from suing Goodrich in Texas on the first patent broadened to include the second, which Goodrich alleges is "duplicative" of the one involved in New York. Goodrich also appeals from the order of the District Court in El Paso requiring the parties to proceed with discovery.

Finding that the United States District Court in El Paso failed properly to weigh the effect of its action on the right of the United States District Court in New York to proceed with the action first filed there, and particularly to supervise its own injunction, for reasons of comity and sound judicial administration we reverse and direct that the injunction of the United States District Court for the Western District of Texas be dissolved, its order vacated, and the action brought by Mann be either transferred to the Southern District of New York or dismissed.

I. The Two Patents and the Two Courts

In November 1968 in the Southern District of New York Goodrich brought an action for declaratory judgment against Mann, seeking a declaration that in promoting its "Fabrilock" program it was not directly or contributorily infringing United States Patent No. 3,394,405 ('405), issued to Mann, or, alternatively, that the patent be declared either invalid or unenforceable, or that Goodrich be entitled to a royalty-free license. Goodrich alleged, inter alia, that it manufactures and sells "Fabrilock" film throughout the United States for reinforcing the knees of slacks; that Mann has asserted to various of Goodrich's customers that in reinforcing slacks in the way recommended by Goodrich they were infringing the '405 patent; that the patent was invalid because Conklin — the sole inventor asserted by Mann — had derived the invention from others; that the process described in the patent was developed by Mann in collaboration with Goodrich for their mutual benefit and Mann had wrongfully appropriated the entire process for itself; that the patent was invalid because Mann had misled the Patent Office during its prosecution; that the patent was invalid for the usual statutory reasons such as anticipation by or obviousness in view of the prior art, and insufficiency of the disclosure to enable others skilled in the art to use the invention. The New York complaint further alleged that the process recommended by Goodrich and used by its customers did not, at any rate, infringe the claims of the patent.

Shortly after the New York suit on patent '405 was filed by Goodrich, Mann sued in the Western District of Texas on the same patent, naming Goodrich along with Hortex, Inc., an El Paso garment manufacturer who used "Fabrilock" to reinforce the knees of permanent crease slacks, as infringers. Then Mann moved the New York court to transfer Goodrich's declaratory judgment action to Texas for consolidation with the infringement suit, arguing convenience of forum, since both Mann and Hortex were located primarily in El Paso. After oral argument on 29 January 1969, at which it was brought out that Hortex was only one of over 70 garment manufacturers using "Fabrilock" to reinforce the knees of permanent crease slacks and that many of those were located in the New York area, Mann's motion to transfer to Texas was denied from the bench, and Goodrich's motion to enjoin the Texas action was granted. The United States Court of Appeals for the Second Circuit affirmed.

We come now to United States Patent No. 3,503,821 ('821), issued to Mann on 31 March 1970, whose relationship to the '405 patent gives rise to the questions raised on appeal. Both patents derived from the same application which had originally contained a group of claims directed to a method of reinforcing a fabric per se and another more specific group of claims directed to a method of reinforcing the knee area of a permanent press pair of slacks. A single patent application may be restricted to claims directed to only one independent invention¹ and the patent examiner, believing the two groups of claims to be directed to two distinct inventions, required Mann to restrict the original application to one. Mann chose the group of claims directed to the method of reinforcing the knees of permanent press slacks and prosecuted the original application, with these appended, to maturity on 23 July 1968 as the '405 patent. At about the same time Mann filed a divisional application, disclosing the identical process in its specification and drawings, but claiming the method for reinforcing a fabric per se. This application matured into the '821 patent.

On 31 March 1970, the day the '821 patent issued, Mann filed a complaint in the United States District Court for the Western District of Texas charging Goodrich and Hortex with infringement of its '821 patent claims by virtue of the identical acts it had alleged infringed the '405 patent in its first Texas suit, i. e., Goodrich's promotion of its "Fabrilock" program within the District and Hortex's use of "Fabrilock" film to reinforce permanent press slacks at the knees. Goodrich responded by moving the New York court for permission to add by supplemental complaint the '821 patent to its original request for declaratory judgment, and for modification of the New York injunction to include the second Texas action, alleging that the two patents differed only in immaterial respects and were essentially duplicative of each other.

Mann then applied to the Western District of Texas for a temporary restraining order and preliminary injunction prohibiting Goodrich from bringing on its motion in New York. To preserve his jurisdiction over the controversy on the '821 patent until he could decide the propriety of his entertaining suit, the District Judge entered a temporary restraining order against Goodrich. Thereafter a hearing was held on the preliminary injunction, at which time the District Court in Texas had before it the records made in the New York and Texas suits on both patents.

On 7 May 1970 the United States District Court for...