Salem Engineering Co. v. National Supply Co.
| Decision Date | 05 February 1948 |
| Docket Number | Civ. No. 6577. |
| Citation | 75 F. Supp. 993 |
| Parties | SALEM ENGINEERING CO. v. NATIONAL SUPPLY CO. et al. |
| Court | U.S. District Court — Western District of Pennsylvania |
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H. L. Shenier, and George D. Lockhart (of Kirkpatrick, Pomeroy, Lockhart & Johnson), of Pittsburgh, Pa., for plaintiff.
Paul N. Critchlow (of Brown, Critchlow, Flick & Peckham), of Pittsburgh, Pa., for defendant.
William B. Jaspert, of Pittsburgh, Pa., for intervener.
This is an action for patent infringement filed by Salem Engineering Company against The National Supply Company. George J. Hagan Company, by previous order of the Court, has been joined as Intervener Defendant.
Answer was filed by the defendant and intervener defendant, but no responsive pleading has been made by the plaintiff.
The matter originally before the Court involved three questions:
(1) Motion of plaintiff to strike Paragraphs 10 and 11, Seventh Defense of intervener's answer:
(2) Motion of intervener to require further answers to interrogatories propounded to plaintiff, and
(3) Motion of intervener for leave to file additional interrogatories directed to plaintiff.
Subsequent to argument intervener filed:
(a) Withdrawal of motions —
(1) for leave to file additional interrogatories propounded to plaintiff
(2) Which would require plaintiff to make further answers to interrogatories previously propounded to plaintiff.
(b) Amended answer by virtue of Rule 15 (a) of the Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c, in which Paragraph 10, Seventh Defense of intervener's answer was cancelled, and in lieu thereof Paragraph 11 of the original answer was rewritten as Paragraphs 10 and 11, Seventh Defense.
In view of the foregoing, the question now before the Court is —
Should the Court, by virtue of the provisions of Rule 12 (f) of the Federal Rules of Civil Procedure, and in the exercise of its discretion, strike from intervener's amended answer, Seventh Defense, Paragraphs 10 and 11?
Plaintiff is the owner of two patents which are involved in this proceeding —
(1) Patent 2,296,791, issued September 22, 1942, relates to rotary hearth furnaces and improved features of construction of such furnaces, known as "Furnace Patent".
(2) Patent 2,293,549, issued August 18, 1942, relates to an improved method and apparatus for heating billets, customarily employed in the production of seamless tubes preparatory to the piercing operation of the process producing the tubes.
On the basis of said patents, plaintiff contends it has built up a large and increasing business in the manufacture and sale of rotary furnaces and apparatus for heating billets. That the defendant is infringing on said patent rights to the great injury and damage of the plaintiff.
The defendant contends —
(a) the patents are invalid and unenforceable;
(b) said patents were secured through false representations, and the perpetration of a fraud upon the Patent Office, and
(c) the plaintiff is engaging in acts of unfair competition and in violation of the Anti-Trust laws known as the Sherman Act, 15 U.S.C.A. §§ 1 and 2, and the Clayton Act, 15 U.S.C.A. §§ 13 and 14.
Intervener in its answer sets forth the same defense and demand for relief as the defendant. In addition thereto, intervener in its amended answer sets forth in Paragraphs 10 and 11 of its Seventh Defense as follows:
The plaintiff argues the Seventh Defense set forth in Paragraphs 10 and 11 of the amended answer should be stricken for the reasons that:
1. It introduces new matter;
2. It relates to res inter alios acta;
3. It comprises matter which cannot be pleaded by the original defendants;
4. It is impertinent;
5. It does not state facts constituting a defense of laches in Paragraph (10) thereof since this paragraph;
a. Depends upon plaintiff's relation to a third party;
b. Does not set forth an unreasonable lapse of time between the notice of infringement and the filing of the suit;
c. Does not set forth facts creating an equitable estoppel;
6. It does not state facts in Paragraph (11) thereof constituting any injury to intervener for that:
a. No acts of plaintiff spelling "unclean hands" are alleged;
b. No facts making out a violation of the Sherman Act appear;
c. No facts making out a violation of the Clayton Act are stated.
The motion for leave to intervene was considered by another member of this Court, and in permitting the intervention it was held, "It is plain the applicant's defense and the main action have a question of law and fact in common".
I believe the action of the Court in permitting intervention was proper since the intervener would be bound by an adverse judgment rendered against the defendant. Innis Speiden & Co. v. Food Machinery Corp., D.C., 2 F.R.D. 261; Ostby & Barton Co. v. Jungersen, D.C., 41 F.Supp. 552.
It is claimed by intervener that the matter now before the Court was considered by another member of this Court at the time the petition for leave to intervene was filed. I have been advised by my esteemed associate that the only question which he adjudicated was the right to intervene generally, with no consideration being given to the specific defenses set forth in the answer attached to the motion for leave to intervene.
In view of this situation, it is proper for the Court at this time to adjudicate the question as to whether the motion to strike Paragraphs 10 and 11 of the Seventh Defense in intervener's amended answer should be granted or refused.
Rule 24 of the Federal Rules of Civil Procedure, 28 U.S.C.A. following Section 723c, does not authorize one given the privilege to intervene as a defendant, the right to set up and enforce against the plaintiff a defense not available to the original defendant and in which the defendant has no interest. The permission to intervene is based on the theory that the intervener may be placed in a position to assert in the action a right of his in respect of some thing in dispute between the original parties. So, the intervener is limited to the field of litigation open to the original parties.
The intervener in the present suit installed a rotary furnace for use with an old tube mill at a plant of the defendant. The plaintiff's claim is based on the alleged infringement of its patent rights by the defendant in the use of said equipment without license or authority from the plaintiff.
The intervener contends that in 1941 it had installed at the plant of Babcock & Wilcox Tube Company, who is not a party to this action, a rotary furnace for heating billets for a tube piercing mill. That said installation was of the same type in connection with which complaint is now made by the plaintiff against the defendant. That when the installation was made by intervener for Babcock and Wilcox Company, the intervener notified the plaintiff it was not infringing plaintiff's patent rights, and to institute action against intervener if plaintiff believed to the contrary. That since plaintiff did not pursue the matter with intervener when requested to do so, the plaintiff lost its rights to recover from intervener, who by contract is liable to the defendant in the instant action, for the payment of any money judgment rendered in favor of the plaintiff and against the defendant. That the instant action was not filed until June 24, 1947, and that during said period of approximately five years, intervener has built up its business and incurred liabilities through plaintiff's acquiescence.
The plaintiff contends laches is a personal defense, and that the intervener or the defendant cannot complain because no action was filed by plaintiff against the alleged infringer, Babcock & Wilcox Company. That in the instant case notice of infringement by defendant was sent May 29, 1947, and this action was filed June 24, 1947, and, as a result thereof, no defense of laches or equitable estoppel could be presented.
The intervener also alleges the plaintiff misused its patent rights in violation of the Sherman and Clayton Acts. The...
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