United Shoe Machinery Co. v. Duplessis Independent Shoe Machinery Co.

• Decision Date: 13 December 1904
• Docket Number: 1,970.
• Citation: 133 F. 930
• Parties: UNITED SHOE MACHINERY CO. v. DUPLESSIS INDEPENDENT SHOE MACHINERY CO., Limited, et al.
• Court: U.S. District Court — District of Massachusetts

133 F. 930

UNITED SHOE MACHINERY CO. v. DUPLESSIS INDEPENDENT SHOE MACHINERY CO., Limited, et al.

No. 1,970.

United States Circuit Court, D. Massachusetts.

December 13, 1904

Elmer P. Howe, Benjamin Phillips, and Alfred H. Hildreth, for complainant.

T. Hart Anderson, for defendants.

HALE District Judge.

This suit in equity is brought by the United States Machinery Company, a citizen of the state of New Jersey, for infringement of a patent, against the Duplessis Independent Shoe Machinery Company (Limited), the Duplessis Shoe Machinery Company, Joseph Cyprien Desautels, and Charles Arthur Hamel. The two defendant corporations are alleged to be alien corporations incorporated under the laws of Quebec in the Dominion of Canada, having their chief place of business in the Province of Quebec, and a regular and established place of business within the district of Massachusetts. Charles Arthur Hamel is alleged to be a citizen of the United States of America, and a resident of Haverhill, in the district of Massachusetts. Joseph Cyprien Desautels is alleged to be an alien, a subject of his majesty Edward VII, and a resident of the city and district of St Hyacinthe, in the province of Quebec.

The case comes before the court upon the plea of Desautels to the jurisdiction of this court, in which plea he moves the court to set aside any service, or pretended service, of process on him, alleging that he is a subject of the King of Great Britain and Ireland, and a resident of the city and district of St. Hyacinthe, in the Province of Quebec; that he is not now, and never has been, a resident of the district of Massachusetts; and that he has not now, and never has had, a regular and established place of business in the district of Massachusetts.

The question, then, before the court is whether an alien, who is an inhabitant of no district within the United States, but who is alleged to have committed acts of infringement within the United States, and who has been served with process within this district, is within the jurisdiction of this court.

Section 629 of the Revised Statutes of the United States (U.S. Comp St. 1901, p. 503) provides that 'the circuit courts shall have original jurisdiction as follows: * * * Ninth. Of all suits at law or in equity arising under the patent or copyright laws of the United States. ' Section 711 (U.S Comp. St. 1901, p. 577) provides that 'the jurisdiction vested in the courts of the United States in the cases and proceedings hereinafter mentioned shall be exclusive of the courts of the several states: * * * Fifth. On all cases arising under the patent-right or copyright laws of the United States.'

Under these general provisions, the Circuit Courts of the United States have original and exclusive jurisdiction of all patent suits, without regard to the citizenship of the parties or of the amount in controversy. Has this ample jurisdiction of the Circuit Courts been restricted by subsequent legislation? If it has not, an alien may be sued for the infringement of a patent wherever he may be found. It is necessary to examine the history of legislation touching this matter. The act of March 3, 1887, c. 373, 24 Stat. 552, as amended by the act of March 3, 1891, c. 517, 26 Stat. 826 (U.S. Comp. St. 1901, p. 508), provided, among other things, as follows:

'But no person shall be arrested in one district for trial in another in any civil action before a Circuit or District Court; and 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.'

This statute was before the Supreme Court for construction in the case of In re Hohorst, 150 U.S. 653, 14 Sup.Ct. 221, 37 L.Ed. 1211. In commenting upon the words which we have quoted from the statute, Mr. Justice Gray, speaking for the court, said:

'These words evidently look to those persons, and those persons only, who are inhabitants of some district within the United States. Their object is to distribute among the particular districts the general jurisdiction fully and clearly granted in the earlier part of the same section; and not to wholly annul or defeat that jurisdiction over any case comprehended in the grant. To construe the provision as applicable to all suits between a citizen and an alien would leave the courts of the United States open to aliens against citizens, and close them to citizens against aliens. Such a construction is not required by the language of the provision, and would be inconsistent with the general intent of the section as a whole.'

That case further decided that the law of 1887 did not apply to suits for the infringement of patents. The supreme Court in Re Keasbey and Mattison Co., 160 U.S. 221, 16 Sup.Ct. 273, 40 L.Ed. 402, confirmed the decision of the Hohorst Case in reference to suits for the infringement of patents, and settled the law on that subject. So that under the statute of 1887 patent suits against citizens of the United States were brought wherever the defendant could be found. This was the situation when the act of March 3, 1897, was passed. That act is found in chapter 395, 29 Stat. 695 (U.S. Comp. St. 1901, p. 589). The statute is as follows:

'That in suits brought for the infringement of letters patent the Circuit Courts of the United States shall have jurisdiction in law or in equity, in the district in which the defendant is an inhabitant, or in any district in which the defendant, whether a person, partnership, or corporation, shall

...