Penn Electric Switch Co. v. United States Gauge Co.
| Decision Date | 19 June 1942 |
| Docket Number | No. 7872.,7872. |
| Citation | 129 F.2d 166 |
| Parties | PENN ELECTRIC SWITCH CO. v. UNITED STATES GAUGE CO. |
| Court | U.S. Court of Appeals — Seventh Circuit |
James A. Hoffman and Strauch & Hoffman, all of Washington, D. C., and L. B. Mann and Mann, Brown & Cox, all of Chicago, Ill., for appellant.
W. P. Bair, Will Freeman, and Bair & Freeman, all of Chicago, Ill., for appellee.
Before EVANS and SPARKS, Circuit Judges, and LINDLEY, District Judge.
The plaintiff brought this suit for a declaratory decree. It sought a judicial declaration on the disputed validity and infringement of patent No. 1,972,815. The patent is owned by defendant, who, it is asserted, was threatening plaintiff's customers with infringement suits because of alleged infringement by plaintiff's product of claim 5 of said patent. Plaintiff prayed a decree which would hold said claim 5 invalid and also non-infringed by its product, which was an "automatic control device."
Defendant objected to the jurisdiction of the United States District Court for the Northern District of Illinois, wherein the suit was brought. Its motion to quash service and dismiss the suit raised two questions, both of which were ruled against it.
As a basis of this motion defendant alleged and, by accompanying affidavits, endeavored to prove that it was not an inhabitant of the district wherein the suit was brought; that the offices maintained by it in the city of Chicago were not to make sales contracts, to grant credit, or perform other corporate acts, but were merely to receive orders which were forwarded to its principal office in the city of New York. It likewise argued that the venue of a declaratory judgment suit was fixed by Sec. 51 of the Judicial Code, 28 U.S.C.A. § 112, and the necessary jurisdictional facts were absent in the instant case, to give the District Court jurisdiction.
As a second ground of assault on the court's jurisdiction, it argues that jurisdiction should be refused because of a suit brought by defendant for infringement of this same patent (and same claim) against a customer of plaintiff's, in the District Court of Delaware prior to the commencement of the instant suit.
Defendant's motion was denied, whereupon it filed an answer and counterclaim. Through its counterclaim defendant sought a decree sustaining the validity of the patent and its infringement by plaintiff's product, and an injunction to restrain further infringements.
The trial of the suit on its merits resulted in a decree for the plaintiff. The court adjudged defendant to be the owner of patent No. 1,972,815; found claim 5 of said patent to have been infringed; but held it invalid. It dismissed the defendant's counterclaim for want of equity.
This appeal is from said decree.
Without discussion or elaboration of our views we hold:
Plaintiff's right to bring suit for a declaratory decree was not barred by the pending infringement suit instituted by the defendant against one of plaintiff's customers in Delaware. Borchard, Declaratory Judgments, pages 817-819; Bliss Company v. Cold Metal Process Co., 6 Cir., 102 F.2d 105. In the instant suit the parties were not the same. The plaintiff was not a party to defendant's Delaware suit. Certain affirmative relief, obtainable only on a counterclaim filed by plaintiff, could not be granted in the Delaware suit in which plaintiff was not a party.
Moreover, there was no jurisdictional obstacle to the bringing, or to the maintenance of a suit for a declaratory decree (growing out of an alleged erroneous assertion of validity and infringement of a claim of a patent), based on the pendency of a patent suit, on the same patent and claim, between the same parties, in another court having jurisdiction of the infringement suit and of the parties. The granting of a declaratory judgment lies in the sound discretion of the trial judge.
In such a situation one court may, if the facts warrant it, stay the other suit by ordering the parties before it to take no further steps in the second suit. Such motion to stay, however, is addressed to the court's discretion, not to its jurisdiction. The soundness of the exercise of its discretion may, no doubt, also be reviewed, but only as it presents a question of the proper exercise of judicial discretion.
Disposition of a motion addressed to the court's discretion depends solely upon the facts in each case. A long delayed suit for alleged infringements of an alleged valid patent, after a somewhat extensive attack on customers, — a sort of a guerrilla warfare, — does not appeal to a court of equity, even though the infringement suit was brought before the declaratory judgment suit was begun.
We are, however, not here reviewing a case of alleged abuse of discretion. We are considering a ruling on a motion to dismiss, for want of jurisdiction. We affirm the action of the District Court in refusing to dismiss the suit.
The motion to quash the service was also properly denied, because, on the facts shown, defendant was subject to service of process in Illinois. Defendant was licensed to do business in Illinois. It maintained a place of business in Chicago, which, under the facts, was "a regular and established place of business." The status of its place of business was recently considered by us in the case of James P. Marsh, a corporation, v. United States Gauge Co., 7 Cir., 129 F.2d 161, decided June 11, 1942.
We come now to the merits of the patent which covers an "Automatic Control Device," which is used largely for "automatically maintaining a suitable volume of air * * * in pressure tanks for water * * * to force the water * * * through surface pipes or distributing conduits associated therewith at predetermined pressures."
The District Court found plaintiff infringed the patent. It also found, however, that the claim (No. 5) in issue was invalid in view of the prior art in this field, which was crowded. The narrow and single issue of validity, the District Court met squarely. It conceded the combination was novel, but patentable novelty, it could not find.
This brings us then to the vital question of this appeal.
Is claim 5 of the patent valid? It reads:
To continue reading
Request your trial
-
WF & John Barnes Co. v. International Harvester Co.
...Electric Co., 7 Cir., 6 F.2d 376, 377; Russell v. J. P. Seeburg Corp., 7 Cir., 123 F.2d 509, 511; and Penn Electric Switch Co. v. United States Gauge Co., 7 Cir., 129 F.2d 166, 169); (2) That the naked fact of inconsistency on the question of validity does not pursue the offender to afford ......
-
Windmoller v. Laguerre
...Kerotest Mfg. Co. v. C-O Two Fire Equipment Co., 342 U.S. 180, 185, 72 S.Ct. 219, 96 L.Ed. 200 (1952); Penn Electric Switch Co. v. United States Gauge Co., 129 F.2d 166 (7th Cir. 1942); Crosley Corporation v. Westinghouse Elec. & Mfg. Co., 130 F.2d 474 (3rd Cir. 1942). It is only through th......
-
Western Electric Co. v. Hammond
...6 Cir., 1939, 102 F.2d 105; Assad Abood v. Beldoch-Popper, Inc. D.C.,S.D.N.Y.1942, 45 F. Supp. 679. See Penn Electric Switch Co. v. United States Gauge Co., 7 Cir., 1942, 129 F. 2d 166, certiorari denied, Oct. 26, 1942, 63 S.Ct. 80, 87 L.Ed. ___. Western Electric contends that these cases a......
-
James P. Marsh Corp. v. United States Gauge Co.
... ... Moreover, under the rule of General Electric Co. v. Marvel Rare Metals Co., 287 U.S. 430, 53 S.Ct. 202, 77 L. Ed. 408 (see also Neirbo Co. v ... ...