Root v. Samuel Cupples Envelope Co.

• Citation: 36 F.2d 405
• Parties: ROOT et al. v. SAMUEL CUPPLES ENVELOPE CO. et al.
• Decision Date: 04 December 1929
• Court: U.S. District Court — Southern District of New York

36 F.2d 405 (1929)

ROOT et al. v. SAMUEL CUPPLES ENVELOPE CO. et al.

District Court, S. D. New York.

December 4, 1929.

Charles F. Dane, of New York City (William F. Hall, of Washington, D. C., and Charles F. Dane, of New York City, of counsel), for plaintiffs.

Douglas, Armitage & McCann, of New York City (Elmer J. Gray, of Boston, Mass., of counsel), for defendant Robinson Company.

HUTCHESON, District Judge.

This is a suit for infringement of letters patent. The Samuel Cupples Envelope Company, sued as the user of the machine, having a regular and established place of business in the Southern District of New York, was duly served there, and made default. The defendant John T. Robinson, the maker and seller of the machine in question, entered a special appearance and moved to set aside the service of it on the ground that it did not have a "regular and established place of business within the Southern District of New York."

Upon oral hearing the motion was denied by Judge Thacher without written opinion, whereupon defendant filed its answer saving to itself all right to except to the jurisdiction of the District Court in this case. In its answer defendant excepted to the jurisdiction of the court, denying that it had committed any act of infringement within the district, and that it had a regular and established place of business there.

The cause coming on for hearing, evidence was offered by both plaintiffs and defendant, both upon the question of jurisdiction, and upon the merits of the case as to the validity of the patent and its infringement.

The patent involved has been in Root v. Hobbs Mfg. Co., 294 F. 236, 241, sustained by the Circuit Court of Appeals for this circuit, the court saying, "We regard the patent in suit as a pioneer," and it is strongly urged by defendant that this is another instance of the kind frustrated in Cutler-Hammer Mfg. Co. v. Curtis & Carhart (C. C. A.) 296 F. 117, of a desire on the part of a plaintiff to relitigate his patent in a jurisdiction already committed to his cause.

Defendant has confined his brief to the defense of nonjurisdiction, asserting that, "The case on jurisdiction is so conclusive for the defendant that it would be supererogation to discuss infringement."

Since I agree with defendant, this opinion will not concern itself with the merits of the action.

Unlike suits of a general nature maintained against corporations upon the fiction that by doing business in a state they are present within the state and subject to process there, the jurisdiction in this case is fixed directly by statute, the terms of which are definite and the meaning of which seems fairly clear. This statute, Judicial Code § 48 (28 USCA § 109), provides: "In suits brought for the infringement of letters patent the district courts of the United States shall have jurisdiction, in law or in equity, in the district of which the defendant is an inhabitant, or in any district in which the defendant, whether a person, partnership, or corporation, shall have committed acts of infringement and have a regular and established place of business."

It will be noted that jurisdiction which is founded upon constructive presence in a state extends to corporations alone (Flexner v. Farson, 248 U. S. 293, 39 S. Ct. 97, 63 L. Ed. 250), while the jurisdiction conferred by this statute extends to corporations and individuals alike when they come within its terms.

Since the statute fixes the terms upon which suit can be brought, these terms and these, alone, control the jurisdiction.

Defendant has undertaken to show that no sufficient basis for jurisdiction has been shown, even were the suit of a general nature and not covered by this statute, citing Green v. C., B. & Q. R. Co., 205 U. S. 530, 27 S. Ct. 595, 51 L. Ed. 916; Phila. & Reading Ry. Co. v. McKibbin, 243 U. S. 264, 37 S. Ct. 280, 61 L. Ed. 710; Davega, Inc., v. Lincoln Furniture Co. (C. C. A.) 29 F.(2d) 164; and plaintiff has replied with St. Louis, Southwestern R. Co. v. Alexander, 227 U. S. 218, 33 S. Ct. 245, 57 L. Ed. 486; International Harvester Co. v. Kentucky, 234 U. S. 216, 34 S. Ct. 853, 58 L. Ed. 1284; but since I believe that the statute, in providing that the defendant must have "a regular and established place of business' meant to require more than a mere finding that business was being done in the state, I do not find it...