Woburn Degreasing Co. v. Spencer Kellogg & Sons

• Decision Date: 20 February 1941
• Docket Number: Civ. No. 452.
• Citation: 37 F. Supp. 311
• Parties: WOBURN DEGREASING CO. OF NEW JERSEY v. SPENCER KELLOGG & SONS, Inc.
• Court: U.S. District Court — Western District of New York

37 F. Supp. 311

WOBURN DEGREASING CO. OF NEW JERSEY v. SPENCER KELLOGG & SONS, Inc.

Civ. No. 452.

District Court, W. D. New York.

February 20, 1941.

John S. Powers, of Buffalo, N. Y. (Gifford, Soull & Burgess, of New York City, of counsel), for plaintiff.

Bean, Brooks, Buckley & Bean, of Buffalo, N. Y. (Alfred M. Houghton, Lawrence E. Webster, and Harold F. Watson, all of Washington, D. C., of counsel), for defendant.

KNIGHT, District Judge.

This is a suit for infringement. The defendant in its answer alleges, among other things, invalidity because the patent was issued in violation of Section 4887 of U.S. Revised Statutes, 35 U.S.C.A. § 32. The answer also denied infringement and alleges invalidity in view of the prior art, estoppel, and laches.

Defendant now moves for a separate trial of the issue of validity under authority of Rule 42 (b) of the Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c. Section 42 (b) provides that "The court in furtherance of convenience or to avoid prejudice may order a separate trial of any * * * issue * * *."

No case has come to my attention in which a separate trial of these particular issues has been directed. Moore's Federal Practice Under The New Federal Rules, Vol. 3, page 3051, Section 42.02, referring to the afore-mentioned rule states: "This principle of separate trial has also been applied as to legal and equitable issues. * * * Another example would be where the defendant to a patent infringement action pleaded license and invalidity of the patent. If the license defense is tried in advance of the issue of validity and is decided in favor of the defendant, the necessity of trying the much more complicated issue of validity is avoided, * * *." Again, the same text-writer states, Vol. 1, page 653: "Rule 42 (b) should also be considered in determining the extent of the court's control over litigation. It authorizes `the court in furtherance of convenience * * * to order a separate trial * * *.' Thus, where, in addition to the defenses of invalidity and noninfringement, the defendant challenged the sufficiency of plaintiff's title to the patent to enable it to maintain the suit, the trial court may properly hear the latter issue in advance of the other issues." Doherty Research Co. v. Vickers Petroleum Co., 10 Cir., 80 F.2d 809, certiorari denied 299 U.S. 545, 57 S.Ct. 9, 81 L.Ed. 401, is cited in support of this declaration.

Rule 42 (b) finds its derivation in part from old Equity Rule 29, 28 U.S.C.A. § 723 Appendix. Under the old Equity rules it has been held that the court may order separate trials of certain issues in patent and kindred suits. Cleveland Co. v. Gallon, etc., Co., D.C., 243 F. 405; Sanitary Street Flushing Mach. Co. v. Studebaker Corp., D.C., 226 F. 797. Under the new Rule 42 (b) separate trials have been ordered in various cases which have some bearing here. Seagram-Distillers Corp. v. Manos, D.C., 25 F.Supp. 233; Eisman v. Samuel Goldwyn (copyright infringement) D.C., 30 F.Supp. 436; Seaboard Terminals Corp. v. Standard Oil Co., D.C., 30 F.Supp. 671; Parker Rust-Proof Co. v. Western Union Tel. Co., 2 Cir., 105 F.2d 976; Society of European Stage Authors & Composers, Inc., et al. v. WCAU Broadcasting Co., D.C., 35 F.Supp. 460 (Dept. of Justice Bulletin No. 95) (copyright infringement).

Within its sound discretion the court has a right to order separate trials in issues of validity and infringement in patent suits. Sound discretion must be based on consideration of convenience and prejudice as respects the several parties. In the exercise of that discretion the court may properly consider the long-established practice of hearing the usual issues in the patent suit and the intimate relations which such issues bear to each other as respects the proof usually submitted. In other words, the old practice should not be changed here, except upon the clearest showing that the trial of the issue of validity will not involve the trial of the merits of the other issues or, indeed, a substantial duplication of proof, if the other issues have to be tried. The convenience of the parties would not be served if separation were permitted under such circumstances. Plaintiff claims here that the trial of the issue of validity separately will require proof of the prior art. If this is so to any considerable degree, the motion should be denied.

Section 4887 (35 U.S.C.A. § 32) in part provides that no patent shall "be declared invalid by reason of its having been first patented * * * in a foreign country, unless the application for such foreign patent was filed more than twelve months * * * prior to the filing of the application in this country, in which case no patent shall be granted in this country." Paragraph 7 of the answer raises the issues with respect to Section 4887, supra. It is there alleged that the patent in suit, No. 1,892,258, is invalid because the invention described in it was patented in Germany on July 17, 1931, Patent No. 529,557, on an application No. I 35,266 applied for August 15, 1928, or more than twelve months before the filing of the United States application No. 421,596 for the patent in suit on January 17, 1930. Patent No. 1,892,258 was...