Radio Corporation v. Duovac Radio Tube Corporation

• Decision Date: 17 June 1931
• Docket Number: No. E-5231,E-5233.,E-5231
• Citation: 6 F. Supp. 275
• Parties: RADIO CORPORATION OF AMERICA et al. v. DUOVAC RADIO TUBE CORPORATION (two cases).
• Court: U.S. District Court — Eastern District of New York

6 F. Supp. 275

RADIO CORPORATION OF AMERICA et al. v. DUOVAC RADIO TUBE CORPORATION (two cases).

Nos. E-5231, E-5233.

District Court, E. D. New York.

June 17, 1931.

Stephen H. Philbin and J. V. Groner, both of New York City, for plaintiffs.

Roosevelt & O'Connor, of New York City (Basil O'Connor and Clyde A. Norton, both of New York City, and Joseph Z. Willner, of Chicago, Ill., of counsel), for defendants.

CAMPBELL, District Judge.

These are two motions made by the plaintiffs that paragraphs 9, 10, 11, and 12 of the answer filed in the first above-entitled action, and paragraphs 5, 6, 7, and 8 of the answer filed in the second above-entitled action, be stricken from the record on the ground that said paragraphs are irrelevant and immaterial.

These are suits in equity for patent infringement.

In the first above-entitled suit, General Electric Company, plaintiff, is alleged to be the owner of certain patents and a licensee of others, and Radio Corporation of America is alleged to be a licensee thereunder.

In the second above-entitled suit, American Telephone & Telegraph Company is alleged to be the owner of certain patents, and Radio Corporation of America is alleged to be a licensee thereunder.

The questions involved here are essentially the same in both suits.

The rights acquired by Radio Corporation of America as a licensee, it is alleged in both suits, is by virtue of agreements which are pleaded and proffered, and in the first above-entitled suit it is alleged that the right acquired by General Electric Company as licensee is by virtue of these agreements.

The allegations being as follows:

In the first above-entitled suit: "That, by virtue of duly executed and delivered agreements in writing by and between the plaintiffs, Radio Corporation has been since their execution, and now is licensed under the said Langmuir Letters Patent and Langmuir reissue patent and Mitchell patent, and General Electric Company has been since their execution, and now is, licensed under the said Schottky Letters Patent and under the said Seibt Letters Patent, and your orators ask that the aforesaid Letters Patent, instruments, assignments, and licenses may be taken as part of this bill of complaint, profert being hereby made of the same as the Court may require."

In the second above-entitled suit: "That by virtue of duly executed and delivered agreements in writing by and between the plaintiffs, Radio Corporation has been since their execution and now is licensed under the aforesaid Letters Patent, and your orators ask that the aforesaid Letters Patent, instruments, assignments and licenses may be taken as a part of this bill of complaint, profert being hereby made of the same as the Court may require."

While there is no allegation in the bill of complaint in either suit that Radio Corporation of America or General Electric Company is an exclusive licensee, it is clearly the intention of counsel for plaintiffs to show that they are exclusive licensees, and that they have received such exclusive licenses under the said agreements of which profert is made.

The answers contain the usual twofold defenses of invalidity and noninfringement.

In addition thereto the answers set up, in the paragraphs which it is here sought to have stricken out, as an alleged defense, that plaintiffs have no standing in a court of equity, because "plaintiffs are parties to agreements which form an unlawful conspiracy and combination in restraint of trade"; that the said agreements are "illegal, void and of no force and effect whatever either in law or equity"; and that the plaintiff Radio Corporation of America had "no valid right, license or interest cognizable in law or equity * * * for the reason that the said instruments, assignments and licenses * * * fail to set up any sufficient interest to enable Radio Corporation of America to be joined as plaintiff herein."

It is further alleged that the plaintiffs and others are defendants in a suit brought by the United States in the District of Delaware, alleging an unlawful conspiracy and combination in restraint of trade, and praying that the bill filed on behalf of the government "may be accepted as a part of this answer, with the same force and effect as if they were set out in full in this paragraph."

The Radio Corporation of America, by virtue of the agreements and licenses made profert of by the bills of complaint, is shown to be an exclusive licensee under the patents in suit, and had a right to be joined as plaintiff herein. Radio Corporation of America v. Lehr Auto Supply Co. (C. C. A.) 29 F.(2d) 162; Radio Corporation of America v. Emerson (C. C. A.) 296 F. 51; Radio Corporation of America v. Independent Wireless Telegraph Co. (C. C. A.) 297 F. 521, affirmed (sub. nom. Independent Wireless Tel. Co. v. Radio Corporation) 269 U. S. 459, 46 S. Ct. 166, 70 L. Ed. 357; De Forest Radio Telephone & Telegraph Co. v. Radio Corporation of America (C. C. A.) 20 F.(2d) 598; Shamrock Mfg. Co. v. Radio Corporation of America (C. C. A.) 37 F.(2d) 675.

Plaintiff contends that the alleged violation of Anti-Trust Acts is not a defense to a suit for patent infringement, and that the paragraphs containing the allegations thereof should be stricken out.

This contention of the plaintiff is supported by a long line of cases, among which are American Soda-Fountain Co. v. Green (C. C.) 69 F. 333; Brown Saddle Co. v. Troxel (C. C.) 98 F. 620; Otis Elevator Co. v. Geiger (C. C.) 107 F. 131; Independent Baking Powder Co. v. Boorman (C. C.) 130 F. 726; United States Fire E. C. Co. v. Joseph Halsted Co. (D. C.) 195 F. 295; Weyman-Bruton Co. v. Old Indian Snuff Mills (D. C.) 197 F. 1015; Harms v. Cohen (D. C.) 279 F. 276; General Electric...