Westinghouse Air-Brake Co. v. Great Northern Ry. Co.

• Decision Date: 24 June 1898
• Docket Number: 117.
• Citation: 88 F. 258
• Parties: WESTINGHOUSE AIR-BRAKE CO. v. GREAT NORTHERN RY. CO. et al.
• Court: U.S. Court of Appeals — Second Circuit

88 F. 258

WESTINGHOUSE AIR-BRAKE CO. v. GREAT NORTHERN RY. CO. et al.

No. 117.

United States Court of Appeals, Second Circuit.

June 24, 1898

The bill of complaint was filed October 8, 1896, filed please to the jurisdiction, which were overruled December 27, 1897. The order for an injunction pendente lite was granted April 1 1898. The questions of the validity of claims 1, 2, and 3 of this patent, and of their infringement by the quick action triple valve which is used by the defendant, were before this court, and were decided on October 15, 1894. Westinghouse Air-Brake Co. v. New York Air-Brake Co., 11 C.C.A. 528 63 F. 962, and 26 U.S.App. 248.

Simon Sterne and Wm. H. Kenyon, for appellant.

Frederic H. Betts and George H. Christy (J. Snowden Bell, of counsel) for appellee.

Before WALLACE and SHIPMAN, Circuit Judges.

SHIPMAN Circuit Judge.

The first question which arises upon this appeal is that of the jurisdiction of the circuit court for the Southern district of New York over the cause, so far forth as it relates to the appellant. The Great Northern Railway Company is a corporation organized under the laws of the state of Minnesota, and is a citizen of that state, and operates a line of railway from Duluth and St. Paul to the Pacific coast. It has an office in the city of New York, where its transfer books are kept and transfers of stock are made; and this part of its corporate business is attended to at said office by Edward T. Nichols, its secretary and assistant treasurer, who resides at Morristown, N.J. Service was made upon him in New York City, as secretary of the corporation. The complainant is a citizen of the state of Pennsylvania.

The appellant insists that, when the bill was filed, the only existing statute which prescribed and designated the proper district within which suits arising under the patent laws could be brought against a citizen of the United States was the first section of the act of March 3, 1887, as amended by the act of August 13, 1888 (25 Stat. 434), the last clause of which is as follows:

'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, but where the jurisdiction is founded only on the fact that the action is between citizens of different states, suits shall be brought only in the district of the residence of either the plaintiff or the defendant.'

The question whether the circuit courts of the United States could take jurisdiction without the consent of the defendant, of suits of which the federal courts have exclusive jurisdiction, in any other district than the one of which the defendant was an inhabitant when the suit was brought, has been much discussed since the date of the act of March 3, 1887, but, for the present, must be considered as substantially settled by the dicta contained in the opinions of the supreme court in Re Hohorst, 150 U.S. 653, 14 Sup.Ct. 221, decided December 18, 1893, and in Re Keasby & Mattison Co., 160 U.S. 221, 16 Sup.Ct. 273, decided December 16, 1895.

If the clause of the section which has been quoted was an independent paragraph, and had no relation to the previous clauses of the same section, the contention of the appellant would have great force; but in the Hohorst Case it is regarded as so related to the preceding clauses that it must be considered as referring only to the jurisdiction of the circuit courts, which is concurrent with that of the several states. The earlier part of the section is as follows:

'The circuit courts of the United States shall have original cognizance, concurrent with the courts of the several states, of all suits of a civil nature, at common law or in equity, where the matter in dispute exceeds, exclusive of interest and costs, the sum or value of two thousand dollars, and arising under the constitution or laws of the United States, or treaties made, or which shall be made, under their authority, or in which controversy the United States are plaintiffs or petitioners, or in which there shall be a controversy between citizens of different states.'

The bill in equity in this case does not aver the sum or value of the matter in dispute, and the jurisdiction of the circuit court depends entirely upon the subject-matter. In regard to causes of that class, the supreme court says in the Hohorst Case, which was a suit by a citizen of New York against an alien corporation, for the infringement of letters patent of the United States:

'By statute 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. Sec. 629, cl. 9; Id. Sec. 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 two thousand dollars 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 the 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.'

The Keasby & Mattison Case was a suit in equity between citizens of different states for the infringement of a trade-mark under the statute of March 3, 1881; and the bill alleged that the matter in dispute, exclusive of interest and costs exceeded the sum or value of $2,000. The court hold that a suit for infringement of a trade-mark under the trade-mark act of 1881 was 'one of which the courts of the United States have jurisdiction concurrently with the courts of the several states,' and that it came within the provisions of section 1 of the act of August 13, 1888, and repeat the two grounds which governed the decision in the Hohorst Case, the second of which has been stated, and say emphatically that it is distinguishable from a trade-mark case in the essential particulars that 'it was a suit for infringement of a patent right, exclusive jurisdiction of which had been granted to the circuit courts of the United States by clause 9 of section 629, and clause 5 of section 711, of the Revised Statutes, re-enacting earlier acts of congress, and was therefore not affected by general provisions regulating the jurisdiction of the courts of the United States, concurrent with that of the several states. ' This construction of the provisions of section 1 of the act of 1888 was very...