United States Expansion Bolt Co. v. H.G. Kroncke Hardware Co.

• Decision Date: 05 August 1914
• Docket Number: 18-E.
• Citation: 216 F. 186
• Parties: UNITED STATES EXPANSION BOLT CO. v. H. G. KRONCKE HARDWARE CO.
• Court: U.S. District Court — Western District of Wisconsin

216 F. 186

UNITED STATES EXPANSION BOLT CO. v. H. G. KRONCKE HARDWARE CO.

No. 18-E.

United States District Court, W.D. Wisconsin.

August 5, 1914

Banning & Banning, of Chicago, Ill., for complainant.

Alan M Johnson, of New York City, for defendant.

SANBORN District Judge.

This is an infringement suit on patent No. 623,809, dated April 25 1899, upon an expansion bolt. Defendant is a local hardware dealer, and purchased the alleged infringing bolts from the Diamond Expansion Bolt Company of New York, which has assumed defense of the suit with the acquiescence of the plaintiff. When the suit was begun, plaintiff's attorneys wrote a letter to the Diamond Company, inclosing a copy of the bill of complaint, and saying they presumed the latter company would undertake the defense of the suit. Accordingly, it is so defending, and signs the answer along with the Kroncke Company. The Diamond Company is thus a substantial party under the rule of this circuit, as held in General Electric Co. v. Morgan, 168 F. 52, 93 C.C.A. 474, and of the Sixth circuit in Foote v. Parsons Non-Skid Co., 196 F. 951, 118 C.C.A. 105, and is entitled to be made a formal party as well. It has applied to be made a party, and the application is granted.

Other features of the motions now made present more difficulty. Complainant has applied for an order striking out three counterclaims pleaded by defendants, one for unfair competition, the others for infringement of two patents covering expansion bolts similar to those covered by plaintiff's earlier patent.

From examination of the pleadings it appears that plaintiff claims under the McCreery patent of April 25, 1899, and the defendants under the Cook patent of November 5, 1901, No 685,820, and the Pleister patent of October 25, 1910, No. 973,559. Defendant Diamond Company charges infringement of these patents by plaintiff, also unfair competition by plaintiff in making and illustrating its articles so as to look like those of the Diamond Company, with the purpose of deceiving the public and injuring defendants.

It appears further that both plaintiff and the Diamond Company are corporations organized and existing under the laws of New York, and that three patent suits are pending in the Southern district of New York, involving the Cook and Pleister patents, in which the plaintiff in this suit is the defendant. These suits cannot be heard before some time in the winter of 1914-15 or spring of 1915. The Diamond Company has also brought a suit for unfair competition in the Supreme Court of the state of New York against the plaintiff in this suit; the latter suit being still pending and undetermined.

The defendants in this suit have also filed seven interrogatories, the first of which has been answered, and the plaintiff moves to strike out all the others. These interrogatories inquire whether the plaintiff has sold in the Southern district of New York or in the Western district of Wisconsin any shields or anchors advertised by it as two part malleable lag shields, one piece lead anchors, or improved screw anchors, and, if so, how many. Plaintiff has moved to strike out the three counterclaims and the six interrogatories above referred to.

Plaintiff makes its objection to the counterclaims and interrogatories referred to on the ground that it has brought a patent suit in this district, which it is entitled to have there determined without bringing in matters properly determinable in the Southern district of New York. Jurisdiction in this suit being based upon the act of 1897, providing that District Courts shall have jurisdiction in the district of which the defendant is an inhabitant, or in any district in which the defendant has committed acts of infringement and has a regular and established place of business, plaintiff argues that this court can have no jurisdiction of the two patent suits sought to be brought here by the Diamond Company through its counterclaims, or of the suit for unfair competition covered by the other counterclaim. The Diamond Company relies upon the second paragraph of Equity Rule 30 (201 F. v, 118 C.C.A. v), which reads as follows:

'The answer must state in short and simple form any counterclaim arising out of the transaction which is the subject matter of the suit, and may, without cross-bill, set out any set-off or counterclaim against the plaintiff which might be the subject of an independent suit in equity against him, and such set-off or counterclaim, so set up, shall have the same effect as a cross-suit, so as to enable the court to pronounce a final judgment in the same suit both on the original and cross-claims.'

As I understand it, the act of 1897 does not relate primarily to the jurisdiction of the federal court, but is rather a provision affecting the place of the suit or venue. The District Court is given jurisdiction of suits for the infringement of patents, and the act of 1897 has for its object the fixing of the proper place of suit. This statute was passed for the benefit and...