Metallizing Engineering Co. v. Metallizing Co.
| Decision Date | 01 August 1945 |
| Citation | 62 F. Supp. 274 |
| Parties | METALLIZING ENGINEERING CO., Inc., v. METALLIZING CO. OF AMERICA et al. |
| Court | U.S. District Court — Southern District of New York |
Burgess & Dinklage, of New York City, for plaintiff.
Morris Kirschstein, of New York City, for defendant Metallizing Co. of America.
Plaintiff seeks an injunction pendente lite restraining defendants, who are partners doing business as the Metallizing Company of America, from infringing United States Letters Patent No. 2,320,327 () and the Reissue Patent No. 22,397 (), directly or indirectly, and from contributorily infringing the reissue patent.
Defendants move to dismiss or strike paragraphs 13 and 14 of the complaint, which allege contributory infringement, or if that is denied, for a more definite statement or bill of particulars as to those and other paragraphs of the complaint.
The facts are not in substantial dispute. Both parties sell materials and equipment used in metallizing, that is the application of metal in spray form, and plaintiff also licenses patented processes of metallization. The patents mentioned, the second being the reissue of the first, both contain eleven identical claims, and relate to a process by which a metal surface, to which spray metal is to be applied with a high degree of bond, is conditioned for the spray step by establishing contact between such surface and a metal electrode, electrically heating the contacting surfaces of the electrode and metal surface by means of an electric current flowing through the contacting surfaces to firmly bond the electrode material to the metal surface, and causing small amounts of electrode material to be left deposited on the metal surface. These small metal protuberances are means by which the spray material is bonded to the metal surface being treated.
The particular basis of the present suit seems to be the plaintiff's contention that the defendants, for the purpose of advancing the sale of its Mogul Electric Bonder, a transformer which may be used for the purpose of treating the metal surface in the manner mentioned, as well as for other purposes, has engaged in direct infringement of plaintiff's process patent by practicing the process claimed and described in demonstrating to others how the transformer may be so used, and in addition has engaged in a contributory infringement by inciting others so to infringe, by instructing them how to do it, by distributing written instructions to that end, by advising others that the patents mentioned are invalid and should be disregarded, and by advising and agreeing with purchasers of their transformer that defendants would safeguard and indemnify purchasers of their transformer against the consequences of such infringement.
One of the purchasers of defendants' Mogul Electric Bonder was the Kenyon Bearing & Auto Parts Co., Inc. Plaintiff brought suit against it in the United States District Court for the District of Connecticut for infringement of the process claims of the reissue patent. The defense of that suit was assumed and conducted by defendants here who had sold the apparatus to Kenyon. The case was tried before Judge Hincks and resulted in a decree in favor of plaintiff. D.C., 62 F.Supp. 42. A final decree was entered in favor of plaintiff on April 17, 1945, which held the patent good and valid, that all of its claims, except 8, 9 and 10, had been infringed, and granted an injunction against Kenyon from practicing or causing to be practiced the process involved in the patent, with costs and damages to be ascertained. An appeal has been taken from the decree and is now pending.
In view of the fact that defendants here assumed and conducted the defense of that litigation in behalf of the Kenyons, they are bound by the adjudication then made and it must now be assumed that the patentability of the process is no longer a question between the parties to this suit. Caterpillar Tractor Co. v. International Harvester Co., 3 Cir., 120 F.2d 82-84, 139 A.L.R. 1. That an appeal is pending does not militate against the efficacy or binding effect thereof. Deposit Bank of Frankfort v. City of Frankfort, 191 U.S. 499-511, 24 S.Ct. 154, 48 L.Ed. 276; Reed v. Allen, 286 U.S. 191; Cohen v. Superior Oil Corporation, 3 Cir., 90 F. 2d 810.
Contributory infringement, of course, was not involved in the Kenyon case. Defendants there were held to be direct infringers. During the trial discussion was had looking to defendants here becoming co-defendants there, after it appeared that they had assumed and were conducting the defense. Their counsel offered to make the defendant company here a co-defendant in the other suit if plaintiff would charge it with contributory infringement. The offer was accepted by plaintiff's counsel, who stated that plaintiff charged it with both direct and contributory infringement, and further stated that it was his understanding that if the defendant lost in the Kenyon case, defendants here would, therefore, be precluded from infringing. Whereupon defendant's counsel stated that he did not agree to that, that there was a difference between making the Metallizing Company a defendant and intervening; that it was not intervening, but that if plaintiff wished to charge it with infringement it should do so, and that charge would be denied and litigated. It contended that there was a serious question whether contributory infringement could exist at all, particularly in view of the fact that defendants only sold the Mogul Electric Bonder, which was an unpatented apparatus capable of use not only in carrying out the patented process but also for many other purposes. Nothing, however, seems to have been done except the making of the admission that the Metallizing Company had an understanding with the Kenyon Company that it would be held harmless and that all costs, expenses and damages in that suit would be paid by the Metallizing Company. In view of this situation it is obvious that contributory infringement was not at issue or litigated in the Kenyon case.
But even if it might be said that the mere fact that the subject was not litigated would not preclude the binding effect of the judgment, if it could have been litigated, a court of equity might refuse to enjoin if it were obvious that the patent was being used to enforce or...
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