Standard Oil Company v. Montecatini Edison SpA

• Decision Date: 08 May 1972
• Docket Number: Civ. A. No. 4319,4321 and 4323.
• Citation: 342 F. Supp. 125
• Parties: STANDARD OIL COMPANY, Plaintiff, v. MONTECATINI EDISON S.p.A., et al., Defendants. PHILLIPS PETROLEUM COMPANY, Plaintiff, v. E. I. du PONT de NEMOURS & CO. et al., Defendants. E. I. du PONT de NEMOURS AND COMPANY, Plaintiff, v. MONTECATINI EDISON S.p.A. et al., Defendants.
• Court: U.S. District Court — District of Delaware

342 F. Supp. 125

STANDARD OIL COMPANY, Plaintiff, v. MONTECATINI EDISON S.p.A., et al., Defendants.

PHILLIPS PETROLEUM COMPANY, Plaintiff, v. E. I. du PONT de NEMOURS & CO. et al., Defendants.

E. I. du PONT de NEMOURS AND COMPANY, Plaintiff, v. MONTECATINI EDISON S.p.A. et al., Defendants.

Civ. A. Nos. 4319, 4321 and 4323.

United States District Court, D. Delaware.

May 8, 1972.

COPYRIGHT MATERIAL OMITTED

Robert H. Richards, III of Richards, Layton & Finger, Wilmington, Del., William H. Vogt, III of Watson, Leavenworth, Kelton & Taggart, New York City, and Edward W. Warren of Kirkland, Ellis & Rowe, Washington, D. C. for Standard Oil Co. (Indiana).

C. Waggaman Berl, Jr. of Booker, Green, Shaffer, Berl & Wise, Wilmington, Del., Sidney Neuman and Harry J. Roper of Pendleton, Neuman, Williams & Anderson, Chicago, Ill., Donald J. Quigg and E. E. Innis, Bartlesville, Okl. for Phillips Petroleum Co.

Roger A. Hines, Wilmington, Del. and Gerald A. Hapka, Washington, D. C. and Louis F. Reed of Fish & Neave, New York City for E. I. duPont de Nemours and Co.

Edmund D. Lyons of Morris, James, Hitchens & Williams, Wilmington, Del., David H. Pfeffer and Thomas M. Gibson of Morgan, Finnegan, Durham & Pine, and White & Case, New York City for Montecatini Edison S.p.A. and Novamont Corp.

William Prickett of Prickett, Ward, Burt & Sanders and Clinton F. Miller, Wilmington, Del. for Hercules, Inc.

OPINION

LATCHUM, District Judge.

All three of the above civil actions have been brought in this Court pursuant to 35 U.S.C. § 146 to review a decision of the Patent Office Board of Patent Interferences entered on November 29, 1971 which awarded priority of invention of the subject matter of Interference No. 89,634 to Montecatini Edison, S.p.A. ("Montecatini"). The parties in all three suits are identical except that Novamont Corporation ("Novamont"), a Delaware company and wholly owned subsidiary of Montecatini, was named as an additional party defendant in Civil Action No. 4321.

These cases are presently before the Court on the motions of Montecatini and Hercules, Inc. ("Hercules") to dismiss the three suits under Rule 12(b) (1) and (3), F.R.Civ.P., on the grounds (a) that this Court lacks jurisdiction over the subject matter of the actions and (b) that venue is not proper in this District. Alternatively, Hercules has moved to transfer the actions to the District Court for the District of Columbia pursuant to 28 U.S.C. § 1406(a) or § 1404(a). Hercules also has moved for an award of costs and attorney fees. Novamont has moved to dismisss C.A. No. 4321 pursuant to Rule 12(b) (6) on the ground that the complaint fails to state a claim against it upon which relief can be granted.

A. Background Facts

Patent Interference No. 89,634 was declared by the Patent Office on September 9, 1958. The purpose of the interference was to determine which of five patent applicants was entitled to priority of invention of a polypropylene product ultimately defined as:

"Normally solid polypropylene, consisting essentially of recurring propylene units, having a substantial crystalline polypropylene content."

The five patent applications involved in the interference were:

Application Serial No. 462,480, filed October 15, 1954, by Alex Zletz, assigned to Standard Oil Company (Indiana), (herein "Standard").

Application Serial No. 514,099, filed June 8, 1955, by Giulio Natta, et al., assigned to Montecatini Edison S.p.A.

Application Serial No. 523,621, filed July 21, 1955, by Edwin J. Vandenberg, assigned to Hercules, Inc.

Application Serial No. 556,548, filed December 30, 1955, by Warren Nesmith Baxter, et al., assigned to E. I. duPont de Nemours & Company (herein "Du Pont").

Application Serial No. 558,530, filed January 11, 1956, by John Paul Hogan, et al., assigned to Phillips Petroleum Company (herein "Phillips").

On October 6, 1964, during the course of the interference, the Board of Patent Interferences terminated the proceeding with respect to Vandenberg, Hercules' assignor, for the reason that Vandenberg was not the first inventor in view of the fact that his preliminary statement failed to allege a date of invention prior to the filing date of the Zletz application. Thereafter on November 10, 1964 Vandenberg and Hercules, as parties dissatisfied with a decision in Interference No. 89,634, brought an action under 35 U.S.C. § 146 in the United States District Court for the District of Columbia (C.A. No. 2794-64). Du Pont, Montecatini, Phillips and Standard were named as defendants in that suit. The plaintiffs therein sought the District Court's determination that the Board of Patent Interferences erroneously adjudged Vandenberg not the first inventor. The District of Columbia District Court on June 11, 1965 held that C.A. No. 2794-64 was properly brought under 35 U.S.C. § 146 but that it should be held in abeyance until a final award in priority had been made in Interference No. 89,634. Vandenberg v. E. I. duPont de Nemours & Co., 242 F.Supp. 188, 190 (D.D.C.1965).

Interference No. 89,634 continued to be litigated until November 29, 1971 when the Board of Patent Interferences finally awarded priority of invention of the subject matter of the interference to Natta, et al., Montecatini's assignors, on Patent Application No. 514,099. At the same time, the Board adjudged that the respective assignors to Standard, Du Pont and Phillips were not the first inventors of the subject matter of the interference.

During the week of January 24, 1972, Standard, Phillips and Du Pont each individually brought two civil actions under 35 U.S.C. § 146 to review the Board's award of priority of invention to Montecatini. One action was brought by each of them in this Court (the above three actions) and one by each of them in the District Court for the District of Columbia.¹ Thus, including Hercules' suit (C.A. No. 2794-64) filed in 1964 in the District Court for the District of Columbia, there are now seven separate actions pending in the two district courts, involving substantially the same parties,² seeking a determination of whether the Board of Interferences' award of priority to Montecatini was correct.

On February 28, 1972, on Montecatini's motion, the District of Columbia Court ordered the three recently filed actions in that court brought by Standard, Du Pont and Phillips to be consolidated for all purposes, including discovery and trial, with the earlier action brought by Hercules in 1964.

It is undisputed that Montecatini is a corporation organized and existing under the laws of the Republic of Italy with its principal place of business in Milan, Italy.

B. Motions of Montecatini and Hercules to Dismiss

Montecatini's and Hercules' motions to dismiss the Delaware actions under Rule 12(b) are based solely on the lack of subject matter jurisdiction and improper venue. It is extremely significant to note that these motions raised no question as to this Court's lack of in personam jurisdiction, the insufficiency of process or insufficiency of service of process with respect to Montecatini. At argument Montecatini clearly conceded that it was not challenging the sufficiency of process, the service of process or personal jurisdiction.³ Indeed, when the 12(b) motions were filed and those motions omitted then available possible defenses of lack of jurisdiction over the person, insufficiency of process and insufficiency of service of process, such defenses and objections cannot thereafter be raised and must be considered waived. Rule 12(g) and (h), F.R.Civ. P.; Konigsberg v. Shute, 435 F.2d 551 (C.A.3, 1970); 2A Moore, Federal Practice (2d Ed.) ¶ 12.33, pp. 2446-2450. Thus, the only issues for determination on Montecatini's and Hercules' motions to dismiss are (1) whether this Court has subject matter jurisdiction and (2) whether venue is properly laid in this district.

1. The issue of subject matter jurisdiction

Montecatini and Hercules first contend that, since Montecatini is admittedly a foreign corporation, jurisdiction over the subject matter of these three civil actions to review an award of priority by the Board of Patent Interferences is vested exclusively in the United States District Court for the District of Columbia.

Hercules also argues that each of the five corporate parties to the present actions is an indispensable and adverse party. It further points out that Montecatini is an Italian corporation, Standard is an Indiana corporation and Du Pont, Phillips and Hercules are Delaware corporations. Thus, it contends that, since the corporate parties "reside" at their place of incorporation, there are ". . . adverse parties residing in a plurality of districts not embraced within the same state . . .," and that, consequently, § 146 mandates that these civil actions to review an award of priority can be heard only by the District of Columbia Court upon whom exclusive subject matter jurisdiction is conferred.

These two contentions are based on the literal language found in the second paragraph of 35 U.S.C. § 146 which reads:

"If there be adverse parties residing in a plurality of districts not embraced within the same state, or an adverse party residing in a foreign country, the United States District Court for the District of Columbia shall have jurisdiction and may issue summons against the adverse parties directed to the marshal of any district in which any adverse party resides. Summons against adverse parties residing in foreign countries may be served by publication or otherwise as the court directs." (Emphasis added.)

The Court is unable to agree with these contentions. Neither the language of the provision, its legislative history nor the cases decided under it, on close examination, indicate that it confers exclusive subject matter jurisdiction upon the District of Columbia Court or restricts this Court's subject matter jurisdiction granted by 28 U.S.C. § 1338(a).

Subject matter jurisdiction deals with the Court's competence "to...