Walsh v. Albert Wahle Co.

• Decision Date: 01 March 1928
• Docket Number: No. 3433.,3433.
• Citation: 25 F.2d 350
• Parties: WALSH v. ALBERT WAHLE CO., Inc., et al.
• Court: U.S. District Court — Eastern District of New York

25 F.2d 350 (1928)

WALSH v. ALBERT WAHLE CO., Inc., et al.

No. 3433.

District Court, E. D. New York.

March 1, 1928.

Talley & Lamb, of New York City, for the motion.

Dyke & Schaines, of New York City, opposed.

INCH, District Judge.

This is a motion for an order "enjoining and restraining the defendants and each of them, their officers, agents, servants, and employees and successors, pending this suit and until the final determination thereof, from manufacturing or distributing or dealing in any manner or advertising or exhibiting or giving publicity in any form to or otherwise infringing complainant's rights under United States letters patent No. 1,349,241, dated August 10, 1920, and United States letters patent No. 1,412,432, dated April 11, 1922."

The motion is made in a suit, at issue, in this court. The defendant opposes the motion on the ground that such relief should be granted plaintiff, if at all, only after the trial of the merits.

The facts alleged by plaintiff, as the cause of this controversy between the parties, are: That the plaintiff invented something and negotiated with defendants to manufacture and distribute same. That these negotiations "fell through." That defendant, having been thus placed in the position, by means of its making of dies and other apparatus, to so manufacture, etc., persisted in continuing such manufacture, etc., regardless of the failure of such negotiations and in the absence of any oral or written license or contract.

In other words, from the plaintiff's stand-point, there is no license or contract between him and the defendants and the defendants are infringing plaintiff's valid patents.

The defendants, however, contend that there is a license, between them and the plaintiff, but, if this is not found, then they have not infringed, and that the patents are both invalid.

On the argument, the court was in some doubt about its jurisdiction. It seems that plaintiff had brought an action in the state court, but had been denied entrance there at the instance of defendants, on the ground that his suit was one recognized exclusively by federal courts, to wit, a patent infringement suit. Accordingly, plaintiff has brought the present suit. On the argument, however, a good deal was made by defendants of the alleged license.

Both the plaintiff and the defendants are residents of the same state, to wit, the state of New York.

Where a licensee continues to work under a license, which has terminated, as though it were still in force, the licensor has the option to sue him as an infringer, or to sue him for the promised royalty. Ordinarily, where the suit is for royalties, it is one at law or in some cases in equity and jurisdiction of this court will depend on diversity of citizenship, etc. Where, however, the suit is for infringement of a patent, this court has jurisdiction because of the nature of the suit. Woodworth v. Weed, 1 Blatchf. 166, Fed. Cas. No. 18022; Sterling v. Plow-Works, 32 F. 290; Walker on Patents (5th Ed.) p. 371.

Also, the question of jurisdiction, on such a motion as here, stands or falls on what plaintiff alleges in his bill. Lowry v. Hert (D. C.) 273 F. 698; The Fair v. Kohler Co., 228 U. S. 22, 33 S. Ct. 410, 57 L. Ed. 716.

Accordingly, while jurisdiction must be proved at the trial and cannot be assumed (California Co. v. Central Co. C. C. A. 206 F. 5, at page 11), the jurisdiction of this court to hear this preliminary motion must be determined from the bill of complaint.

The complaint filed January 19, 1928, sets forth the alleged ownership of letters patent, and alleges that the defendants have infringed. Plaintiff asks that defendants be enjoined from such infringement, and that they account for the profits made.

This is therefore a suit for infringement of plaintiff's patents, and this court apparently has jurisdiction of the motion, regardless of the incidental matters by which such infringement is alleged to have arisen.

This being so, it is well settled that the various defenses here set up by defendant, though inconsistent with a license, may be set up by answer. Pelham v. Edelmyer, 15 F. 262; Beckwith Box Co. v. Gowdy (D. C.) 244 F. 805; Tate v. Baltimore & O. R. Co. (C. C. A.) 229 F. 141; Barber Co. v. Headley Co. (D. C.) 284 F. 177.

The suit being for an infringement of patents, and defendants having the right to dispute the validity, as well as the alleged infringement of the patents, the sole remaining question is, Should this court interfere, before trial, by summary order, and give plaintiff all the relief to which he may be entitled after a trial of the issues, ending in a decree in his favor?

There has been no adjudication presented of either patent directly or indirectly. The papers presented on this motion cast no light on this issue. The courts have rarely granted such an injunction, and the tendency, if any, is not to do so. Palmer Co. v. Newton (C. C.) 73 F. 218; Hildreth v. Norton (C. C. A.) 159 F. 428; Hartford v. Western (C. C.) 172 F....