Ohio Brass Co. v. Hartman Electrical Mfg. Co.

• Decision Date: 05 May 1917
• Citation: 243 F. 629
• Parties: OHIO BRASS CO. v. HARTMAN ELECTRICAL MFG. CO. McTIGHE IMP. CO. v. SAME.
• Court: U.S. District Court — Northern District of Ohio

243 F. 629

OHIO BRASS CO. v. HARTMAN ELECTRICAL MFG. CO.

McTIGHE IMP. CO. v. SAME.

United States District Court, N.D. Ohio, Eastern Division.

May 5, 1917

Brown Nissen & Sprinkle, of Chicago, Ill., for plaintiffs.

Albert Lynn Lawrence, of Cleveland, Ohio, for defendant.

WESTENHAVER District Judge.

These two suits are based upon the same patent, alleging infringement by the defendant. The answers deny infringment and challenge the validity of the patent sued on. In addition thereto each answer pleads a counterclaim as follows:

'And this defendant pleads, by way of counterclaim, that the plaintiff individually and acting in conspiracy with its putative licensee, Ohio Brass Company, of Mansfield, Ohio and others unknown to the defendant, has damaged and is damaging this defendant, by unlawful and unfounded threats of suit against its customers, and by unfair competitive methods and business practices, all with respect to said 'Simplex Bond,' to an extent not yet ascertained by this defendant, but here alleged in excess of the statutory amount of three thousand dollars ($3,000), exclusive of interest and costs, and it therefore prays an accounting and recovery of the actual damages incurred.'

These motions are to strike out this counterclaim, and three grounds are urged in support thereof:

(1) That these allegations are not sufficient to state an equitable cause of action.

(2) That the facts contained therein, even if amplified and properly pleaded, would state an independent cause of action in equity and not a counterclaim within the meaning of the second part of new equity rule 30 (201 F. v, 118 C.C.A. v).

(3) That the cause of action therein contained being cognizable in a federal court only because of diversity of citizenship, and the plaintiff not being an inhabitant of the Northern district of Ohio, but of New Jersey, this court cannot take jurisdiction without the consent or waiver by plaintiff of his privilege of being sued in his home district.

An exhaustive examination of the authorities was made by me shortly after the argument and submission of these motions. I have found them to be in conflict, and have withheld an announcement, in the hope that I might find time to write and file a suitable opinion. However, not finding sufficient time so to do, I am now filing this announcement and memorandum in order not to delay parties in preparing for trial.

Manifestly the first objection is well taken. The counterclaim, as pleaded, consists primarily of a few conclusions of law and fact. It does not set forth operative facts sufficient to constitute a cause of action.

I am of opinion that the motions should also be sustained on the second ground. It is upon this proposition that the authorities are in hopeless conflict, and an attempt to reconcile them is manifestly impossible. A large number of federal judges construing and interpreting the latter part of new equity rule 30 have reached a conclusion which requires this motion to be granted, while a number of others have reached the opposite conclusion. I am of opinion that the weight of reason and argument is with the former group, and have decided to adopt that ruling and adhere to it until a different ruling is made by some tribunal whose authority is controlling upon me.

The line-up of federal judges in favor of the ruling now being made is as follows: In Terry Steam Turbine Co. v. B. F. Sturtevant Co. (D.C.) 204 F. 103, Circuit Judge Dodge; in Williams Patent Crusher & P. Co. v. Kinsey Mfg. Co. (D.C.) 205 F. 375, District Judge Hazel; in Vacuum Cleaner Co. v. American Rotary Valve Co. (D.C.) 208 F. 419, Circuit Judge Lacombe; in Adamson v. Shaler (D.C.) 208 F. 566, District Judge Geiger; in Atlas Underwear Co. v. Cooper Underwear Co. (D.C.) 210 F. 347, District Judge Geiger (reiterating his holding in 208 F. 566); in Klauder-Weldon Dyeing Machine Co. v. Giles et al. (D.C.) 212 F. 452, Circuit Judge Dodge (reiterating holding in 204 F. 103); in Sydney v. Mugford Printing, etc., Co. (D.C.) 214 F. 841, District Judge Thomas; and in Christensen v. Westinghouse Traction Brake Co. (D.C.) 235 F. 899, District Judge Thomson. The best statement of the reasons for the holding made in these cases is by Judge Thomson in the case last cited.

The line-up against the ruling is as follows: In Marconi Wireless Telegraph Co. v. National, etc., Co. (D.C.) 206 F. 295, District Judge Chatfield; in Salt's Textile Mfg. Co. v. Tingue Mfg. Co. (D.C.) 208 F. 156, District Judge Martin; in Electric Boat Co. v. Lake Torpedo Boat Co. (D.C.) 215 F. 377, District Judge Rellstab.

The contention is made that in United States, etc., Bolt Co v. Kroncke Hardware Co., 234 F. 868, 148 C.C.A. 466, the Circuit...