Otto v. Koppers Company
| Decision Date | 01 September 1955 |
| Docket Number | Civ. A. No. 655-W. |
| Citation | 134 F. Supp. 886 |
| Court | U.S. District Court — Northern District of West Virginia |
| Parties | Carl OTTO, Plaintiff, v. KOPPERS COMPANY, Inc., a Delaware corporation, and WHEELING STEEL CORPORATION, a Delaware corporation, Defendants. |
O'Brien & O'Brien, Wheeling, W. Va., Pennie, Edmonds, Morton, Barrows & Taylor, John E. Hubbell, New York City, for plaintiff.
Schmidt, Hugus & Laas, Wheeling, W. Va., Brown, Critchlow, Flick & Peckham, Pittsburgh, Pa., for defendants.
This is an action for infringement of Letters Patent No. 2,599,067 issued to plaintiff on June 3, 1952, as the inventor of the invention in production of ammonium sulphate therein described. Plaintiff is a citizen and resident of the State of New York.
Defendant Koppers Company, Inc. (hereinafter referred to as "Koppers") is a corporation duly organized and existing under the laws of Delaware, having its principal place of business in Pittsburgh, Pennsylvania, and duly licensed to do business in the State of West Virginia. Defendant Wheeling Steel Corporation (hereinafter referred to as "Wheeling Steel") is a corporation duly organized and existing under the laws of Delaware, having its principal place of business at Wheeling, West Virginia, and duly licensed to do business in the State of West Virginia.
The complaint alleges that Koppers maintains a regular and established place of business in Brooke County, in the Northern District of West Virginia, and has committed acts of infringement in said county; that Wheeling Steel maintains a regular and established place of business in said Brooke County and has committed acts of infringement therein; that the venue of this action is laid in the Northern District of West Virginia under Title 28 United States Code, §§ 1391(b), 1391(c) and 1400(b).
The complaint charges that Koppers, without authority from the plaintiff, has been, since June 3, 1952, and still is, infringing said Letters Patent by: making, using and selling by-product coke oven apparatus embodying the patented invention; using methods embracing the patented invention for the continuous production of sulphate of ammonia; actively inducing others, including Wheeling Steel, to use said apparatus and methods of the patented invention; and selling to others, including Wheeling Steel, apparatus for use in practicing said methods of the patented invention constituting a material part of said invention, knowing the same to be especially made or especially adapted for use in an infringement of said patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, in the Northern District of West Virginia, as well as elsewhere within the United States, and will continue to do so unless enjoined by this Court.
Wheeling Steel is charged in the complaint with infringement in the Northern District of West Virginia by procuring Koppers to make for it apparatus embodying the patented invention; using said apparatus; and using methods embracing the patented invention for the continuous production of sulphate of ammonia.
The joint answer of Koppers and Wheeling Steel, in addition to denying infringement, under affirmative defenses, puts in issue and challenges the validity of the plaintiff's patent No. 2,599,067, alleging lack of invention, prior disclosure of the claimed invention in publications and patents, the selection and aggregation of old elements and the use of old method steps, each known to those skilled in the art before plaintiff's alleged invention, and for other reasons. Said answer, by way of counterclaim, alleges that an actual controversy exists and prays for a declaratory judgment disposing of the controversy.
The joint answer of the defendants denies that either of them has committed the acts of infringement as charged in the complaint and, answering the allegation in paragraph 8 of the complaint as to venue, says:
"Without admitting the conclusion of law implied in this paragraph, defendants waive any issue of venue that otherwise could be raised on the complaint."
The plaintiff served, pursuant to Rule 33 of Federal Rules of Civil Procedure, 28 U.S.C., upon Koppers seventeen interrogatories. Koppers answered a portion of interrogatory No. 10, all of interrogatory No. 15 and filed written objections to the remainder of plaintiff's interrogatories.
In briefs submitted by Koppers and by plaintiff on the objections to plaintiff's interrogatories and in argument before the Court, it appears that the answer of Koppers sufficiently challenges the plaintiff's assertion of venue under Title 28, Sections 1391(b) and 1391(c) in addition to admitting venue under Section 1400 (b).
Under the general venue statute, Title 28, § 1391, the cited subsections are as follows:
Title 28, § 1400(b), reads as follows:
"Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business."
Koppers contends, in objecting to answering interrogatories, that Section 1400(b) is the exclusive venue provision in patent infringement cases; that plaintiff is attempting to broaden the jurisdiction of the Court to cover all acts done anywhere by interrogatories directed to, and intended to prove, infringement in the United States generally and particularly beyond the limits of West Virginia, and that plaintiff should not be allowed to stand on Section 1391 for general and unlimited venue and jurisdiction, while at the same time relying on Section 1400(b), under which proof of infringement in West Virginia must be established and "under which it has been held that interrogatories as to alleged infringement outside West Virginia will not be allowed".
The court decisions on the question of venue in patent infringement cases are not unanimous. Ackerman v. Hook, 3 Cir., 1952, 183 F.2d 11, appears to be the first Court of Appeals decision to consider Section 1400(b). That Court reviews much of the historical background of that section, the revisor's notes in connection with the adoption of the new Title 28 in 1948 and held, in effect, that Section 1400(b) is the exclusive venue provision in patent infringement cases.
There have been no decisions by the Court of Appeals for the Fourth Circuit on this point. Plaintiff cites Dalton v. Shakespeare Co., 5 Cir., 1952, 196 F.2d 469, Guiberson Corp. v. Garrett Oil Tools, Inc., 5 Cir., 1953, 205 F.2d 660, certiorari denied 346 U.S. 886, 74 S.Ct. 137, 98 L.Ed. 390, rehearing denied 346 U.S. 917, 74 S.Ct. 273, 98 L.Ed. 413, supporting the proposition that the word "resides" in Section 1400(b) is to be given the definition of "residence", as set forth in the general venue statute relating to corporations, Section 1391(c).
Koppers calls attention to the fact that the Circuit Court of Appeals for the Seventh Circuit has taken the opposite view and cites C-O-Two Fire Equipment Co. v. Barnes, 7 Cir., 1952, 194 F.2d 410, which was affirmed by the United States Supreme Court by an equally divided Court, 344 U.S. 861, 73 S.Ct. 102, 97 L.Ed. 695. Since an affirmance by an equally divided Supreme Court is not binding on the lower Federal Courts, Hertz v. Woodman, 218 U.S. 205, 30 S.Ct. 621, 54 L.Ed. 1001, this Court is free to follow either the Fifth Circuit or the Seventh Circuit.
There are a number of District Court decisions to the effect that Section 1400 (b) is the controlling venue section in patent cases. I cite as follows: Pierce v. Perlite, D.C.Cal.1952, 110 F.Supp. 684; Nachtman v. Jones & Laughlin, D.C.D.C. 1950, 90 F.Supp. 739; Arkay Infants Wear v. Klines, D.C.Mo.1949, 85 F.Supp. 98; Fischer v. Karl, D.C.N.Y.1949, 84 F.Supp. 53; Rava v. Westinghouse, D.C. N.Y.1950, 90 F.Supp. 707; Federal Electric Products Co. v. Frank Adams, D.C.N.Y.1951, 100 F.Supp. 8; Ronson Art Metal Works v. Brown & Bigelow, D.C.N.Y.1952, 104 F.Supp. 716; Transmirra v. Magnavox, D.C.N.Y.1953, 110 F.Supp. 676.
The Court's attention has been directed to a decision of the Honorable Sterling Hutcheson, District Judge for the Eastern District of Virginia, in the case of Manville Boiler Co., Inc., v. Columbia Boiler Co. of Pottstown, Inc., wherein the Court approved the decision of the Court of Appeals for the Fifth Circuit in Dalton v. Shakespeare Co., supra. However, Judge Walter E. Hoffman, of the United States District Court for the Eastern District of Virginia, in the case of Clayton v. Swift & Co., D.C., 132 F.Supp. 154, 157, cited the decision of the Seventh Circuit in C-O-Two Fire Equipment Co. v. Barnes, supra, and stated:
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