Warren Bros. Co. v. Kibbe
| Decision Date | 15 June 1925 |
| Docket Number | No. 8726.,8726. |
| Parties | WARREN BROS. CO. v. KIBBE et al. |
| Court | U.S. District Court — District of Oregon |
Wood, Montague & Matthiessen, of Portland, Or., for plaintiff.
F. S. Senn, of Portland, Or., for Ætna Casualty & Surety Co.
I. H. Van Winkle, Atty. Gen., and J. M. Devers and L. A. Liljeqvist, Asst. Attys. Gen., for Commission and members, Warren Construction Co., Pacific Bridge Co., and Kibbe.
Bowerman & Kavanaugh, of Portland, Or., for A. D. Kern.
Dey, Hampson & Nelson and G. L. Buland, all of Portland, Or., for United States Fidelity & Guaranty Co.
McCamant & Thompson and Ralph H. King, all of Portland, Or., for Fidelity & Deposit Co. of Maryland.
This is a suit brought by a patentee against the state highway commission and divers and sundry contractors and their sureties to recover a royalty on the infringement of the plaintiff's patent.
The case is important and has been extensively briefed. I have examined the briefs and authorities there cited as far as the time at my disposal would permit. I have not been able, or have not had time, to formulate an elaborate opinion, but I shall state briefly, and without citation of authorities, the conclusions at which I have arrived.
It appears from the bill that in 1919 and 1920 the highway commission, acting under and in pursuance of law, contracted with certain individuals and firms for the laying of pavement, all embracing the same construction and under the same specifications, and in each contract provided that any royalty on patented pavement should be paid by the commission, and that it would indemnify and save and protect the contractors against damages on account of patent infringement. Among these contractors was one Oscar Huber, and after the pavement had been laid the plaintiff brought suit against Huber for infringement of patent and for damages. The Attorney General of the state, or his representative, appeared and defended the suit, and after a protracted and expensive trial the patent was declared valid in this court, and its decree affirmed by the Court of Appeals. 3 F.(2d) 899. Thereafter this suit was commenced against the highway commission and several contractors and their sureties to compel the commission to comply with the law and its contract, and pay such royalties, and to be subrogated to the actual contractors.
Motions to dismiss and to transfer to the law side of the court and for a further definite and specific statement have been filed. On behalf of the commission it is contended that the suit cannot be maintained against it because it is in effect a suit against the state, which is prohibited by the Eleventh Amendment to the Constitution of the United States.
There are almost innumerable decisions to be found in the books on this question, and authorities can be found supporting either view. It would be useless, if not impossible, to reconcile the authorities, and I do not attempt to do so. It is enough that in my opinion the great weight of authority as well as reason supports the rule that an action or suit may be maintained against a state agency to compel it to perform a plain official duty which the law imposes upon it, and a contract which it has entered into in pursuance of the law. The highway commission is authorized and empowered by law to award contracts for the construction of certain highways. It is provided with a fund to be held by the state treasurer, a trust fund for roads and highway purposes, to be expended by the commission in its...
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...by the Eleventh Amendment); Automobile Abstract & Title Co. v. Haggerty, 46 F.2d 86, 87-88 (E.D.Mich.1931) (same); Warren Bros. Co. v. Kibbe, 43 F.2d 582, 584 (D.Ore.1925) (holding that a state had waived its immunity to suit for patent infringement by agreeing to indemnify contractors for ......
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...16 F.Supp. 762 (E.D.Pa.1936); Automobile Abstract & Title Co. v. Haggerty, 46 F.2d 86 (E.D.Mich.1931). The case of Warren Bros. Co. v. Kibbe, 43 F.2d 582 (D.C.Or.1925), is distinguishable for there the court found consent on the part of the state by virtue of its indemnity undertakings. But......