Rhodes Pharmacal Co. v. Dolcin Corporation

• Decision Date: 02 June 1950
• Citation: 91 F. Supp. 87
• Parties: RHODES PHARMACAL CO., Inc., v. DOLCIN CORPORATION.
• Court: U.S. District Court — Southern District of New York

91 F. Supp. 87

RHODES PHARMACAL CO., Inc., v. DOLCIN CORPORATION.

United States District Court S. D. New York.

June 2, 1950.

Pennie, Edmonds, Morton & Barrows, New York City, for plaintiff.

A. Abba Orlinger, New York City, for defendant.

IRVING R. KAUFMAN, District Judge.

Plaintiff has brought suit in two counts against the defendant; the first count is for a declaratory judgment as to infringement and the validity of defendant's patent No. 2,471,394; count II is for unfair competition. Defendant has moved to dismiss, and alternatively to strike certain portions from, both counts of the complaint, as amended.

The motions to dismiss can be considered together. The defendant alleges that a justiciable controversy does not exist in count I to warrant a suit under the Declaratory Judgment Act, 28 U.S.C.A. §§ 2201, 2202, and that count II fails to allege that notices and statements made by the defendant were untrue, and therefore that count is insufficient in law.

The plaintiff, a manufacturer of pharmaceutical products, sells a medicinal tablet known as "Imdrin" which contains aspirin and calcium succinate. On May 24, 1949, U. S. patent No. 2,471,394 was issued to the defendant. This patent is for a medicinal compound containing aspirin and a succinic material such as calcium succinate. Immediately after the patent was issued, the defendant wrote plaintiff and plaintiff's customers that it had received a patent with "broad generic" claims, that is, that its patent "covers products containing those two ingredients (aspirin and calcium succinate) in a wider range of proportions in which they are effective in that field." The letters to the trade stated that "the news of our patent enables you to know that not only one who makes or uses a product covered by our patent and without license from us, but also one who sells such product without license infringes our patent. Since we have given no licenses to others, this information enables you to be guided accordingly."

Defendant, it is alleged, also published and caused to be published articles in the trade journal threatening suit against infringers of its patent.

Plaintiff alleges, and it so appears to this Court, that the claims made by defendant in its letters as to the scope of its patent would constitute plaintiff an infringer by reason of its manufacture of "Imdrin". Plaintiff claims that the messages sent by the defendant to the trade were untrue allegations as to the scope of its patent and that plaintiff thereby lost business and was damaged, and that the threat of an infringement suit hangs heavy over the heads of plaintiff and its customers.

Defendant contends that because it has not formally made claim of infringement of its patent by plaintiff's product either to plaintiff or its customers, a justiciable controversy does not exist. In order to seek declaratory judgment relief as to the validity of a patent, the claim against plaintiff need not be formally asserted; furthermore, it is not necessary that notice be given directly to the plaintiff or that any threat be made to sue the plaintiff. Aralac, Inc., v. Hat Corp. of America, 3 Cir., 1948, 166 F.2d 286, 292. Notice in a trade journal is sufficient. Id. The test of a justiciable controversy is whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. Id.

It is evident that there is a substantial controversy here. Defendant has by insinuations and innuendo threatened plaintiff and its customers with patent infringement suits; thereby the plaintiff, it is alleged, has lost and continues to lose business. The defendant apparently believes that it can avoid a court test of the validity of its patent, and the claim as to its scope made to the trade, by withholding formal claim of infringement. This is not the law. Even a person who is about to engage in conduct which a patentee has generally indicated would constitute an infringement may bring a declaratory judgment action before he is damaged. See Borchard, Declaratory Judgments, 2d Ed., p. 807. The case of Dewey & Almy Chemical Co. v. American Anode, 3 Cir., 1943, 137 F.2d 68, is almost on all fours with the present action; the only difference is that even less claim of infringement was made in that...