Union Switch & Signal Co. v. Hall Signal Co.

• Decision Date: 23 January 1895
• Citation: 65 F. 625
• Parties: UNION SWITCH & SIGNAL CO. et al. v. HALL SIGNAL CO. et al.
• Court: U.S. District Court — Southern District of New York

65 F. 625

UNION SWITCH & SIGNAL CO. et al. v. HALL SIGNAL CO. et al.

United States Circuit Court, S.D. New York.

January 23, 1895

Cravath & Houston, for complainants.

Witter & Kenyon, for defendants.

TOWNSEND District Judge.

Counsel agree that the decision of the single question presented by demurrer and plea to this bill depends upon whether certain statements in the opinion of the supreme court of the United States in Re Hohorst, 150 U.S. 653, 14 Sup.Ct. 221 are controlling upon this court in this case. The suit is for infringement of a patent. The defendants claim that the circuit court for the Southern district of New York has no jurisdiction, because they are inhabitants of another state and are not inhabitants of the state or district within which the suit is brought. The act of March 3, 1887 (chapter 373) as amended by that of August 13, 1888 (chapter 866), vests in the circuit and district courts of the United States jurisdiction over certain classes of controversies, and further provides that 'no civil suit shall be brought before either of said courts against any person by any original process or proceeding in any other district than that whereof he is an inhabitant. ' By a decided preponderance of authority in the circuit courts, this act and the preceding ones of a like character have been applied to suits for infringement of patents against nonresident individuals and corporations. St. Louis, V. & T.R. Co. v Terre Haute & I.R. Co., 33 F. 385; Fales v. Railway Co., 32 F. 673; Miller-Magee Co. v. Carpenter, 34 F. 433; Gormully & Jeffrey Manuf'g Co. v. Pope Manuf'g Co., Id. 818; Preston v. Manufacturing Co., 36 F. 721; Denton v. International Co., Id. 1; Connor v. Railroad Co., Id. 273; Jessup v. Railroad Co., Id. 735; McBride v. Plow Co., 40 F. 162; Henning v. Telegraph Co., 43 F. 131; Reinstadler v. Reeves, 33 F. 308; Illingworth v. Atha, 42 F. 141.

The precise question involved herein was presented by demurrer in this circuit in Halstead v. Manning, Bowman & Co., 34 F. 565, and the bill was dismissed by Judge Wallace, on the ground that this court has no jurisdiction over the defendant nonresident corporation. In Filli v. Railroad Co., 37 F. 65, Judge Lacombe set aside a service of summons on a nonresident defendant, on the same ground.

It was further shown by counsel for defendants that the construction of said provision adopted in this circuit, and generally in other circuits, had been repeatedly assumed by the supreme court, and directly applied to suits for infringement of patents, in the following cases: Chaffee v. Hayward, 20 How. 208; Butterworth v. Hill, 114 U.S. 128, 5 Sup.Ct. 796.

In Re Louisville Underwriters, 134 U.S. 488, 10 Sup.Ct. 587, the supreme court recognizes the substantial identity of the earlier and the existing statutes, so far as this forum clause is concerned.

In Re Hohorst, supra, suit was brought against a foreign corporation for infringement of a patent. The subpoena was served upon the general agent of the company at its principal place of business at the city of New York. The motion of the defendant to dismiss the bill, because of lack of jurisdiction, was granted, and the case came before the supreme court on an application for a writ of mandamus to the judge of the circuit court to take jurisdiction of the suit, as against the corporation. The supreme court granted the writ. Mr. Justice gray, delivering the opinion of the court, said:

'Moreover, the present suit is for an infringement of a patent for an invention, the jurisdiction of the national courts over which depends upon the subject-matter, and not upon the parties; and, by statutes in force at the time of the passage of the acts of 1887 and 1888, the courts of the nation had original jurisdiction, 'exclusive of the courts of the several states,' of all cases arising under the patent right or copyright laws of the United States, without regard to the amount or value in dispute. Rev.St. § 629, cl. 9; Id. § 711, cl. 5. The section now in question, at the outset, speaks only of so much of the civil jurisdiction of the circuit courts of the United States as is 'concurrent with the courts of the several states,' and as concerns cases in which the matter in dispute exceeds $2,000 in amount or value. The grant to the circuit courts of the United States, in this section, of jurisdiction over a class of cases described generally as 'arising under the constitution and laws of the United States,' does not affect the jurisdiction granted by earlier statutes to any court of the United States over specified cases of that class. If the clause of this section defining the district in which suit shall be brought is applicable to patent cases, the clause limiting the jurisdiction to matters of a certain amount or value must be held to be equally applicable, with the result that no court of the country, national or state, would have jurisdiction of patent suits involving a less amount or value. It is impossible to adopt a construction which necessarily leads to such a result. U.S. v. Mooney, 116 U.S. 104, 107, 6 Sup.Ct. 304; Miller-Magee Co. v. Carpenter, 34 F. 433. * * * Upon deliberate advisement, and for the reasons above stated, we are of opinion that the provisions of the existing statute which prohibit suit to be brought against any person 'in any other district than that whereof he is an inhabitant' is inapplicable to an alien or a foreign corporation sued here, and especially in a suit for the infringement of a patent right; and that, consequently, such a person or corporation may be sued by a citizen of a state of the Union in any district in which valid service can be made upon the defendant. In re Louisville Underwriters, 134 U.S. 488, 10 Sup.Ct. 587.'

In the able and exhaustive briefs and arguments of counsel for defendants, it was strenuously contended that the decision of the court in Re Hohorst proceeded upon the ground that as the defendant therein was an alien, not an inhabitant of any district within the United States, it was necessary to so construe the above provision as not to embrace aliens. Upon this point the supreme court says:

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