Rockwell Mfg. Co. v. Evans Enterprises

• Decision Date: 09 January 1951
• Docket Number: Civ. A. No. 4592.
• Citation: 88 USPQ 88,95 F. Supp. 431
• Parties: ROCKWELL MFG. CO. v. EVANS ENTERPRISES, Inc., et al.
• Court: U.S. District Court — Western District of New York

95 F. Supp. 431

88 USPQ 88

ROCKWELL MFG. CO. v. EVANS ENTERPRISES, Inc., et al.

Civ. A. No. 4592.

United States District Court W. D. New York.

December 19, 1950.

On Motion for Reconsideration January 9, 1951.

Fleischmann, Augspurger, Henderson & Campbell, Buffalo, N. Y., for plaintiff.

McMahon & Schmidt, North Tonawanda, N. Y. (Blenko, Hoopes, Leonard & Glenn, Pittsburgh, Pa., of counsel), for defendants.

KNIGHT, Chief Judge.

The plaintiff has made two motions (1) for an order striking from paragraph 8 of the answer the averment: "and defendants aver that Rockwell has marked the number of the Letters Patent on gas pressure regulators which are not covered by said Letters Patent." on the ground that such averment is immaterial, impertinent and scandalous and is prejudicial to plaintiffs, and for an order striking from the answer the averments of paragraph 9, which reads as follows: "Rockwell is barred by its laches from the relief prayed for herein." on the ground that paragraph 9 constitutes an insufficient defense in that it states a mere legal conclusion; and for an order striking paragraph 12 of the counterclaim on the ground that the averments of such paragraph are immaterial, irrelevant, impertinent and redundant; and (2) to dismiss defendants' counterclaim for unfair competition on the grounds that the court lacks jurisdiction over the subject matter and that defendants fail to state a cause of action upon which relief can be granted.

Paragraph 8 should be stricken if for no other reason than that it is not necessary that this be plead. If material, it may be proved upon the trial.

Paragraph 9 is a plea of laches. Plaintiff claims that it is insufficient in that it states a mere legal conclusion. It seems that the motion to strike must be granted, but with leave to the defendant to amend. Eastman Kodak Co. v. McAuley, D.C., 41 F.Supp. 873.

Paragraph 12 should also be stricken. This seems to be a repetition of certain of the allegations in paragraph 13.

Upon the argument defendants' counsel stated that paragraph 12 is intended to be an interpretative paragraph to the counterclaim.

The remaining question here is as to whether this court has jurisdiction. The plaintiff Rockwell Manufacturing Company and the defendant American District Steam Company are each a corporation of the State of Pennsylvania. Defendant Evans Enterprises, Inc., a New York corporation, was originally the sole defendant, and thereafter, upon order of this court, on stipulation of the parties, the American District Steam Company was added as a party defendant. It is made to appear that the latter had actively succeeded to the business of the defendant Evans Enterprises, Inc. subsequent to the commencement of this action. The imminent question is whether a claim of unfair competition, in a counterclaim, as here, can be joined in the trial of an issue of infringement as permitted by 28 U.S.C.A. § 1338(b).

Patent No. 2,380,459, applied for July 27, 1942, and issued July 31, 1945, to F. Niesemann, relates to a gas pressure regulator and the feature claimed is that a certain valve in the regulator is so placed in the well that it is held against turning when the nut at the top is screwed onto the valve stem. The valve is not accessible; and an object is that the regulator may be cast in substantially its finished form. The valve is released by a flexible diaphragm which is connected to the valve stem by a nut, and the gas pressure causes the valve to move up and down when the gas pressure fluctuates. The patent relates solely to this valve.

The defendant denies infringement, asserts invalidity and also sets up a counterclaim. The counterclaim is based upon the claim that plaintiff put on the market regulators differing in construction from the regulator illustrated and described in Letters Patent to wit, which were substantially the same as defendant's regulator in construction and appearance and that Rockwell marked this changed structure with the legend Patent No. 2,380,459, and plaintiff is continuing to notify defendant's customers that defendant's pressure regulators are covered by plaintiff's patent; that this action is calculated to cause defendant's customers to believe that they infringe Rockwell's patent, and that this practice constitutes unfair competition.

28 U.S.C.A. § 1338(b) reads: "The district courts shall have original jurisdiction of any civil action asserting a claim of unfair competition when joined with a substantial and related claim under the copyright, patent or trade-mark laws". Chap. 646, 62 Stat. 931, June 25, 1948.

The purpose of this statute is to save piecemeal action. Prior to the enactment of the foregoing section, there was a great deal of confusion on the question of joinder, but that confusion was largely allayed by the decision in Hurn v. Oursler, 289 U.S. 238, 53 S.Ct. 586, 587, 77 L.Ed. 1148. There the court said: "The unfair competition in respect of the copyrighted play, according to the allegations, results from the same acts which constitute the infringement and is inseparable therefrom."

Construing the Hurn v. Oursler decision, the court in Musher Foundation, Inc., v. Alba Trading Co., Inc., 2 Cir., 127 F.2d 9, said: "As we understand the decision in Hurn v. Oursler, 289 U.S. 238, 53 S.Ct. 586...