Meinecke v. Eagle Druggists Supply Co.
| Decision Date | 23 March 1937 |
| Citation | 19 F. Supp. 523 |
| Parties | MEINECKE et al. v. EAGLE DRUGGISTS SUPPLY CO., Inc. |
| Court | U.S. District Court — Southern District of New York |
Hauff & Warland, of New York City (William E. Warland, of New York City, of counsel), for plaintiffs.
Charles Martin, of New York City, for defendant.
The motion is by the plaintiff to dismiss counterclaim as insufficient in law. The bill is a conventional one for infringement of patent. It alleges that plaintiff Meinecke is owner and plaintiff Davol Rubber Company exclusive licensee of patent 1,583,019, and that defendant is making and selling an infringing article. The defendant's answer is also conventional in that it denies infringement and sets up invalidity of the patent sued on. The defendant then proceeds to set forth, by way of counterclaim, that the plaintiff Davol Rubber Company marks its product with three patent numbers, including the one sued on that it has stated to the defendant's customers and to the trade generally that the defendant's article infringes patents of the plaintiff without specifying any particular patent, that all three patents are void on various grounds, and that accordingly there is an actual controversy between the parties. The prayer for relief is that the court issue declaratory judgment that the three patents are void or that the defendant does not infringe them.
The case then is one where the plaintiff sues for infringement of one patent, and the defendant, after denying infringement and asserting invalidity of that patent, asks in a counterclaim that declaratory judgment be given adjudging invalid the patent sued on and two other patents held by the plaintiff. The question is whether the counterclaim may be entertained.
Counterclaims in equity are governed by rule 30 of the Equity Rules (28 U.S.C. A. following section 723). The rule recognizes two kinds of counterclaims, those setting forth matters arising out of the same transaction which is the subject-matter of the suit, and those setting forth matters which might be the subject of an independent suit in equity in the federal courts against the plaintiff. As to both kinds, the matters set forth must, of course, point to the conclusion that the defendant is entitled to affirmative relief of some sort against the plaintiff; otherwise the counterclaim is defective on its face, just as an independent bill setting up the same matters would be. So an objection to a counterclaim may be based on the point that it is not of the kind that may be entertained under the Equity Rules, or on the point that the content of the counterclaim does not show a case for affirmative relief.
If we take up, first, the sufficiency of the counterclaim as presenting a case for affirmative relief, it is evident that there is a defect in substance so far as the two patents not sued on by the plaintiff are concerned. Only by inference is it alleged that the plaintiff has ever claimed that the defendant is infringing these patents. As to them, the controversy may be wholly imaginary; at best it is tenuous. Declaratory judgment may be issued...
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Treemond Co. v. Schering Corporation, 7684.
...Incubator Co., D.C., S.D.Ohio, 34 U.S. P.Q. 251. The declaratory judgment has been asserted through counterclaims. Meinecke v. Eagle Druggists Supply Co., D.C., 19 F.Supp. 523; Knaust Bros. v. Goldschlag, D.C., 28 F.Supp. 188; contra: Hann v. Venetian Blind Corp., D.C., 15 F.Supp. 372; Coun......
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Pennsylvania Research Corp. v. Lescarboura Spawn Co.
...in the event plaintiff attempted to withdraw the action. This procedure is proper and has been approved. Meinecke v. Eagle Druggists Supply Co., Inc., D.C., 19 F. Supp. 523. Several days before trial plaintiff entered a disclaimer, duly recorded in the Patent Office, restricting one or more......
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Lambert v. Dempster Bros.
...careful study has been given to the line of cases including Link-Belt Co. v. Dorr Company, D.C., 15 F.Supp. 663; Meinecke et al. v. Eagle Company, D.C., 19 F.Supp. 523; Stadium Manufacturing Company v. Plymouth Corporation, D.C., 24 F.Supp. 779 and others, wherein it was indicated that such......
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Leach v. Ross Heater & Mfg. Co.
...sanctioned such a counterclaim in suits for patent infringement. Link-Belt Co. v. Dorr Co., D.C., 15 F.Supp. 663; Meinecke v. Eagle Druggists Supply Co., D.C., 19 F.Supp. 523; Dewey & Almy Chemical Co. v. Johnson, Drake & Piper, Inc., D.C., 25 F.Supp. 1021. See, also, 50 Harv.L.Rev. 357. We......