Ruddies v. Auburn Spark Plug Co., 60 Civ. 4376.

• Citation: 261 F. Supp. 648
• Decision Date: 09 November 1966
• Docket Number: No. 60 Civ. 4376.,60 Civ. 4376.
• Parties: George F. RUDDIES, Plaintiff, v. AUBURN SPARK PLUG CO., Inc. and Drake America Corporation, Defendants.
• Court: U.S. District Court — Southern District of New York

261 F. Supp. 648

George F. RUDDIES, Plaintiff, v. AUBURN SPARK PLUG CO., Inc. and Drake America Corporation, Defendants.

No. 60 Civ. 4376.

United States District Court S. D. New York.

November 9, 1966.

COPYRIGHT MATERIAL OMITTED

Harry Price, New York City, for plaintiff.

Hancock, Dorr, Ryan & Shove, Syracuse, N. Y., for defendant Auburn.

Fellner & Rovins, New York City, for defendant Drake.

OPINION

TENNEY, District Judge.

On November 9, 1960, plaintiff commenced an action for patent infringement against defendants Auburn Spark Plug Co., Inc. (hereinafter referred to as "Auburn") and Drake America Corporation (hereinafter referred to as "Drake") by causing a deputy United States marshal to deliver two copies of the summons and complaint to 640 Fifth Avenue, New York, New York. The marshal's return of service indicated that said papers were delivered to "R. C. Bruckenthal, Manager". The complaint specifically named both Auburn and Drake as defendants and alleged upon information and belief that both defendants are New York corporations and "are located at and doing business at 640 Fifth Avenue, city, county and State of New York, in the Southern District of New York."

Since neither defendant answered the complaint or made any motion in the action, a judge of this court on October 4, 1962 ordered that a default judgment be entered against Auburn and Drake and that an inquest be taken to determine the amount of damages due plaintiff.

Since the entry of the default judgment against Auburn and Drake, various motions have been presented to the Court by attorneys for plaintiff and for both defendants. The motions addressed to this Court for determination are as follows:

A. A motion by Auburn to have the entry of default and the default judgment entered against it vacated (filed January 20, 1965).¹

B. A motion by plaintiff for summary judgment (filed February 18, 1965). This motion was subsequently withdrawn.

C. A motion by Auburn to stay all proceedings by plaintiff pending a determination of Auburn's motion to vacate the default judgment entered against it (filed March 31, 1965).

D. A motion by plaintiff to compel the defendants to comply with Rules 26-37 of the Federal Rules of Civil Procedure relating to discovery (filed November 3, 1965).

E. A motion by Drake to have the default judgment entered against it vacated (filed March 8, 1966).

F. A motion by Drake objecting to plaintiff's request for admissions (filed March 24, 1966).

G. A motion by Auburn objecting to plaintiff's request for admissions (filed March 28, 1966).

The Court now turns to a consideration of the various motions.

At the outset, it is crucial to determine the statutory scheme in which a Federal district court operates in an action for patent infringement. Such an examination is necessary because of the opinion of Judge Campbell in B. Heller & Co. v. First Spice Mfg. Corp., 172 F.Supp. 46 (N.D.Ill.1959). That case involved a suit for patent infringement brought against two foreign corporations in the Northern District of Illinois. When the defendants appeared specially and moved to quash the return of service and dismiss the action for improper venue, the Court, after a consideration of 28 U.S.C. § 1400(b) (1964)² and 28 U.S.C. § 1694 (1964),³ concluded that both statutes were jurisdictional. Hence, Judge Campbell concluded that "a case brought erroneously under Sec. 1400(b) cannot be transferred but must be dismissed for lack of jurisdiction." 172 F.Supp. at 51.

Although one court, in the Northern District of Illinois, has followed Judge Campbell's holding that § 1400(b) is a jurisdictional as well as a venue statute, Kearney & Trecker Corp. v. Cincinnati Milling Mach. Co., 254 F.Supp. 130 (N.D. Ill.1966), there is authority which states that the decision is incorrect. See Annot., 5 L.Ed.2d 1056, 1061 (1961). After careful consideration of the history and purposes behind 28 U.S.C. § 1400(b), I have concluded that said statute relates solely to venue.

I have reached this conclusion for the following reasons:

28 U.S.C. § 1338(a) provides, in pertinent part, that "The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents * * *." This statute is a clear pronouncement that every district court has jurisdiction over the subject matter of patent infringement. Motoshaver, Inc. v. Schick Dry Shaver, Inc., 100 F.2d 236 (9th Cir. 1938).

But before a district court can proceed to adjudicate a patent infringement suit, more than jurisdiction over the subject matter is required—jurisdiction over the person of the defendant is also necessary. Gibbs v. Emerson Elec. Mfg. Co., 29 F.Supp. 810 (W.D.Mo.1939). Valid service of process or a voluntary appearance is the means by which a court acquires jurisdiction over the person of a defendant. See Kadet-Kruger & Co. v. Celanese Corp. of America, 216 F.Supp. 249 (N.D.Ill.1963); North Allegheny Joint School Sys. v. Secretary of Health, Educ. and Welfare, 196 F.Supp. 144 (W.D.Pa.1961). If jurisdiction over the person of the defendant is never acquired by the Court, any judgment subsequently rendered by the Court is void and of no effect. French Renovating Co. v. Ray Renovating Co., 170 F.2d 945 (6th Cir. 1948); Jones v. Watts, 142 F.2d 575, 163 A.L.R. 240 (5th Cir.), cert. denied, 323 U.S. 787, 65 S.Ct. 310, 89 L.Ed. 628 (1944).

On the other hand, proper venue is not a prerequisite to the rendition of a valid judgment. Objection to venue is a personal privilege which is lost to a defendant if not timely raised. See 28 U.S.C. § 1406(b) (1964); Hoffman v. Blaski, 363 U.S. 335, 80 S.Ct. 1084, 4 L.Ed.2d 1254 (1960).

With these principles firmly established, the Court now proceeds to an examination of whether 28 U.S.C. § 1400 (b) and 28 U.S.C. § 1694 relate to jurisdiction over the person and/or to venue. Any consideration of these statutes must start with an examination of the predecessor statute, 28 U.S.C. § 109. This section provided:

"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. If such suit is brought in a district of which the defendant is not an inhabitant, but in which such defendant has a regular and established place of business, service of process, summons, or subpoena upon the defendant may be made by service upon the agent or agents engaged in conducting such business in the district in which suit is brought." (Emphasis added.)

Since the statute itself was couched in jurisdictional terms, it was not unreasonable for many courts to consider 28 U.S.C. § 109 as both a jurisdictional and a venue statute. Blaw-Knox Co. v. Lederle, 151 F.2d 973 (6th Cir. 1945); Bulldog Elec. Prods. Co. v. Cole Elec. Prods. Co., 134 F.2d 545 (2d Cir. 1943); Shelton v. Schwartz, 131 F.2d 805 (7th Cir. 1942); Phillips v. Baker, 121 F.2d 752 (9th Cir.), cert. denied, 314 U.S. 688, 62 S.Ct. 301, 86 L.Ed. 551 (1941); Endrezze v. Dorr Co., 97 F.2d 46 (9th Cir. 1938). But see General Elec. Co. v. Marvel Rare Metals Co., 287 U.S. 430, 53 S.Ct. 202, 77 L.Ed. 408 (1932); Automatic Toy Corp. v. Buddy "L" Mfg. Co., 19 F.Supp. 668 (S.D.N.Y.1937). Indeed, the United States Supreme Court in Stonite Prods. Co. v. Melvin Lloyd Co., 315 U.S. 561, 62 S.Ct. 780, 86 L.Ed. 1026 (1942), the leading case interpreting Section 109, spoke of the statute in jurisdictional terms.

Hence, this Court fully agrees with Judge Campbell's conclusion in B. Heller & Co. v. First Spice Mfg. Corp., supra, that Section 109 was a jurisdictional statute. However, it is my considered opinion that when the Judicial Code was revised in 1948, and Section 109 was replaced by Sections 1400(b) and 1694, it was not intended that both these sections be considered jurisdictional.

In the first place, 28 U.S.C. § 1400(b) is contained in Chapter 87 of the Judicial Code. This chapter is entitled, "District Courts: Venue" and Section 1400(b) is merely one of numerous venue statutes falling under this chapter. Section 1694, on the other hand, appears in Chapter 113 of the Judicial Code which is labeled "Process".

An even clearer indication of legislative intent are the Reviser's Notes to Sections 1400(b) and 1694. The notes to both sections state that they are based upon the old Section 109 of Title 28. However, the Reviser's Notes to Section 1400(b) unequivocally state that: "The provisions of said section 109 of Title 28, relating to process are incorporated in section 1694 of this title." (Emphasis added.) In contrast, the notes to Section 1694 state: "Venue provisions of said section 109 * * * appear in section 1400 of this title." (Emphasis added.)

From this brief look at legislative history, it is apparent that when the Judicial Code was revised in 1948 the jurisdictional provisions of the old Section 109 were placed in Section 1694 and the provisions relating to venue were placed in Section 1400(b). This view is substantiated by language of the United States Supreme Court in the leading case of Fourco Glass Co. v. Transmirra Prods. Corp., 353 U.S. 222, 77 S.Ct. 787, 1 L.Ed. 2d 786 (1957). In that case, the Court's holding that 28 U.S.C. § 1400(b) was the exclusive statute relating to venue in patent infringement actions brought in Federal district courts was influenced in large part by a careful review of the legislative history behind Section 109 and Section 1400(b). The Court concluded that:

As shown by their notes on § 1400 (b), the Revisers placed the venue provisions * * * of old § 48 28 U.S.C. § 109 with word changes and omissions later noted, in § 1400(b), and placed the remainder, or process provisions, with certain word changes, in § 1694 of the

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