*3 DENMAN, MATHEWS, Before and STEPHENS, Circuit Judges. STEPHENS, Judge. Circuit portions appeal from of a is an United States District final granting of Court, after rendered pleadings judgment on for motion declaratory relief. 28 U.S.C. action for appellant clarity the For 400.1 A. § referred to appellee will be respectively. original filed to the An answer was complaint, and thereafter amendments add patents allegedly ing pertinent were complaint. The amendments engrossed original were complaint and amendments as so en filed grossed were as amended bill of com pertinent allegedly patents plaint. Other as an were later added amendment to this pleading. defendant filed its answer MATHEWS, Judge, dissenting Circuit amended bill of thereto, part. shortly amendment thereafter (Judicial rights 274d.) legal section “§ Code declare and other relations Declaratory judgments authorized; any pro- party petitioning interested for declaration, cedure whether or not further “(1) prayed, In cases of actual ex- relief is or could bo and such dec- cept respect to Federal laration taxes the shall have the force and effect of judgment of the United shall final courts power States or decree and be review- ” * * * declaration, petition, com- able such. plaint, appropriate pleadings or other patents. number our examina- for Such filed its motion allega- your tion regard the has revealed that later models pleadings.
on the
large
mentioned contain
amendments
tions
developed by
of the number
date
of inventions
us
answer as of
and of the
by patents
Company
ab-
complaint, in the
covered
issued
original
filing of the
out.)
fact
patents
(List
thereon.
set
any specific
sence
Denials
occurring
that date.
after
respect
purpose with
our definite
“It is
knowl-
party without
ground
inven-
appropriations of our
to the above
with Rule
complying
regard as
edge we
*
* *
upon recognition
tions
to insist
Proce-
of Civil
Rules
Federal
8(b)
mat-
rights
enforcement of our
723c,
following section
dure, 28 U.S.C.A.
*4
ter.
absence
upon the
denials based
to
relative
request
you
therefore must
“We
to
sufficient
knowledge or information
of
the use of our above mentioned
discontinue
of an aver-
truth
to
belief as
the
form a
your past
for
inventions and account to us
reasonably and
be
rules should
ment. The
* * *
use thereof
technically
construed.
tiff
plaintiff’s
mitted
known
tractor. The
made a
patent
plaint, and
tiff’s
bill.
now
of this
line
Exhibit
cently held
whether the
we
amine
pleadings. Grubbs
defendant
86 F.2d
therein.
plaintiff also
alleges,
alleges
“That
plaintiff’s,
first
Model
comprises various
ents
fendant,
chine
57 S.Ct.
production
nineteen
“We
It
must
as
letter is
undergoing
relating to a
Exhibits
brought out
It is
three
is
termed
belonging to defendant.
such
follows:
herewith
tractor
TA-40, and
part
undisputed in the
275,
amended
as
recently
E,’
with
look
instruction
to
owns
motion for
plaintiff’s
receipt
track
photographs,
Model
models are
* *
TD-60 is
certiorari
also
attached
trial
81
these
for
to
B,
track
manufactures
being
amended
respect'
this bill.”
pertinent
trial
L.Ed.
determine the
C,
have
bill of
sale, and the construction
specie
*
subsequently
submitted
court
models,
amended
controls
T-20,
type
is
shown
books, marked ‘Plain-
Model
line of tractors now
a
to the amended
a
denied 300
exemplified
Smith,
had
867,
tractors which
letter from
to these
larger
D,’
of automotive
judgment on the
marked ‘Plaintiff’s
erred in
complaint further
bill of
described
pleadings that the
tractor,
soon to be
infringements of A.L.R.
portions
Model
occasion to
and
and the
which
a
certain
numerous
charged
pleadings that
TD-60. The
herewith
6 Cir., 1936,
part
size
question
cases
A
illustrated
complaint
U.S.
those re-
and that
granting
tractors,
are
type
copy of
TD-40,
tractor,
thereof
the de-
of this
placed
letters
entire
plain-
those
com-
cited the
sub-
pat-
ma-
658,
you Life
ex-
tractors,
ists
supplied.]
claimed and
defendant,
said letters
by
ment
question
basis for the
leged.
belief
to
course
troversy” as to
240, 241, 57 S.Ct.
statute
in to
TD-60.].
as
opinion
Defendant
[*]
tractors”
rights
tween the
“*
infringement
[*]
This is followed
That
come
As a basis for
Non-infringement
the further
plaintiff,
between
distinguished
alleged
plaintiff
*
Except
Ins.
except as it relates to Model
a
[*]
be
allegation
which defendant claims to
there
*
hypothetical state of facts.
a
pleadings
is
advising
on this
within
[Models
is
considered,
“That an actual
plaintiff
asking
Co. v.
from an actual
as hereinbefore
maintains
patent
definitely
is now
for a
must
alleges
letter from
allegation in the
“relates
appeal
to have
this model
what
that defendant’s
T-20, TD-40,
Haworth, 300 U.S.
jurisdiction
from a
be
minor
decreeing
and the defendant as to
quoted
claiming
by
**
declaratory judgment
infringe defendant’s
is then
settled
defendant
there
an information
controversy
from
to
actual
defendant,
by
matter later here
litigated
the defendant
the action arises
is
all the aforesaid
controversy
prayer
L.Ed.
set
law would be
plaintiff’s
non-infringe
is
tractor. Of
definitely
TA-40
plaintiff
forth,
[Emphasis
no
raises
plaintiff’s
amended
is
in order
TD-60.
possess
for an
in that
charge
shown
which
Aetna
court,
“con
sole
and
and
has
ex-
108
be-
al-
no
to
bring
contention that
“To
out.
out,
To
cause to
. It
come
facts suffi-
concealment;
fails
state
specifically
To
a.
“con- bring forth,
young,
existence
forth,
To
to establish
cient
b.
set
words,
detect;
the in
troversy”
expose;
as to
To
c.
make
manifest;
include this
display
does
advantage,
its terms
letter
d. To
demonstrate,
the amend-
model,
clearly;
establish
and that
e. To
that this
public
it is stated
forth
participa-
wherein
set
for
attention or
ed
tion;
will soon be
book,
undergoing
bring
play,
tests
as to
out
model is
aor
public
existence
negatives
subscription;
loan for
produced for sale
also
in-
controversy.
socially,
troduce
f. To
call forth or at-
tract; as,
spectacle brings
out a crowd.
position, de-
with this
Consistent too
g.
out,
(one)
To draw
inas
conversation.
complaint shows
urges
fendant
that
notice
publish,
magazine
h. To
as a
or an edi-
infringement was
of
by
face
on its
tion.”
tionary,
New International Dic-
[Webster’s
as to
given
never
Edition, Unabridged,
Second
Model TD-60.
edition.]
is,
argument
in this
Defendant’s
controversy is not
agree,
an actual
we
From consideration of the
variations
apprehends
*5
person merely
involved where a
meaning
of
given
that
this indef
by
against him
rights
of
or fears assertion
phrase,
you
inite
“which
brought out,”
have
Actions,
C.J.S.,
subd.
another.
§
by
explanation
modified as it is
that
1031;
Declaratory
Borchard on
pages
Judgments (1934),
fully
Model TD-60 is a
constructed tractor
Therefore,
pp.
36-40.
undergoing
placed
trial
soon to be
in
we
argues (but here
as defendant
do
production
sale,
for
we have come
follow)
sole
for
since the letter is the
basis
conclusion that we would be unwarranted
controversy
alleged
since
determining
as a
of
matter
law that
plaintiff’s allegations as
letter read with
Model TD-60 excludes such model from
to Model TD-60 was not included in the no
infringement.
charging
tice
The amended
any alleged
there is
fact no complaint refers to
photographs
nineteen
“controversy.”
alleged
an
attached as
exhibit for
further
a
de
scription Model
constituting
charge
The
TD-60. Some
letter
in-
of
of these
photographs
portions
fringement,
quoted,
are
refers
to “the
ma
chine,
showing
construction;
details of
you [plaintiff]
track
tractors which
apparently completed
others show
brought
complaint
have
tively
an
out.” The
trac
affirma-
opinion,
tor. We are of the
as also
states that
TD-60
was
Model
was one of
plaintiff’s present
judge,
complaint
that
the.trial
described Model TD-60
the amended
line of tractors and that
it,
mentioned,
as a
exemplified
with the
machine that
others
manufactured,
tractors,
had been
it, TD-60,
notwithstanding
their line of
and that
its
yet
produced
kind had
“undergoing
been
placed
was
in
trial and
soon to be
quantity for
production
sale.
are convinced
for sale.” This is
that
followed
the letter can be held to
by
necessarily
as we have
ex
allegation
seen
that de-
only through,
TD-60
clude Model
charge
giving
fendant’s
relates
“brought out”
unreasonably
the term
to all four models of
[including
meaning which we
TD-60],
restricted
decline to do.
urges
Defendant
that the words of the
points
Defendant next
allega-
you
letter
brought
“which
have
out” of
tion of the
that Model TD-60
necessity
from
charge,
excluded
“undergoing trial
(is)
was
soon
to be
TD-60, which was “undergoing
trial
placed
production
sale,”
for
and con-
production
soon to be placed in
for sale.”
cludes that “nowhere in the bill of com-
following
definitions of the words plaint
anyone
was it
that
had actu-
bring
“to
out” are contained in the dic- ally
using
processes
commenced
which
tionaries cited below:
plaintiff
right
claimed it had the
to use.”
bring
“To
out.
forth;
To set
introduce,
It is
contention
(quot-
defendant’s
here that
young
society,
a
woman into
or
foreign
ing
defendant-appellant’s
opening
subscription.
loan for
publish,
2. To
as a brief) “there is
one
against
no
produce,
new book. 3.
stage.
play,
To
as a
on the
prosecute
whom defendant could
an in-
expose;
4. To
elicit the truth
fringement
by
of.
action
reason of the manu-
develop.”
5. To
Wagnalls
[Funk
Co. facture,
thereof,
use and sale
and therefore
”
New
Dictionary
Standard
English
‘controversy.’
there could be no
We can
Language, 1927 edition.]
go
with defendant in
argument,
as it seems to
its
plaintiff
have
basis in an erroneous
alleged “relates
all the
afore-
assumption that “use” of the article is a said tractors” [including
TD-60.],
necessary
charge
infringe-
element of
plaintiff
and which
contends constitutes
infringed
ment.
had
charge
If the TD-60 tractor
infringement by
defendant
patents,
manufacturing
against plaintiff.
Defendant in
answer
its
by
plaintiff
one machine
would
letter,
writing
admits
but follows
plaintiff subject
in-
a suit for
admission
spect
allegation:
“In
re-
fringement regardless
of “use.” Carter
alleges
never
has
Book
Crume Co. Ltd. v. American Sales
Co.,
inspected
seen
manufactured
tractor
C.C.W.D.N.Y.,
124 F.
by plaintiff
herein
said
referred to
amended bill of
TD-60
as the Model
then, as the
com
So far
tractor,
it never at
prop
concérned,
plaint is
we hold that it
any place
time
notified
erly alleges a
to serve as a
patent
infringed any
tractor Model TD-60
court in this
jurisdiction
basis
owned
defendant.”
declaratory judgment.
action for a
positive
charge
denial
inquire
now
whether
We come
which
based its
held,
which,
facts
we have
allegations of
controversy, preceded
claim
as it is
present
to the court
sufficient
never
had
controversy were
at
justiciable
traversed
“inspected”
[remembering
Model TD-60
for
was made
time motion
in question
the letter
referred to trac
pleadings.
“brought
had been
out”
tors
in its answer to the amend-
Defendant
which had been “examined”
writing
admitted
the letter
ed
effectively
by defendant],
denies1
the.
infringement,
claim of
but
containing the
TD-60. This denial
related to Model
letter
together
*6
of
as
the existence
denied
of “the
further denial
with the
was
TD-60.
It
thereinafter
Model
by plain
dispute alleged
of
existence
affirmatively alleged that
the defendant
as to
ex
factual issue
raises a
tiff”
istence of
directly
any
place
any
or
time
notified
“never at
controversy going
justiciable
TD-60
said tractor Model
plaintiff that
jurisdiction
court.
of
by
any patent owned
defend-
infringed
of the
court
there is a denial
“ex-
Again,
We conclude that
district
ant.”
istence of
dispute alleged by plaintiff.”
plaintiff’s motion for
granting
in
erred
pleadings, as to
judgment on the
Model
by plaintiff
is’suggested
It
TD-60.
ad-
defendant constitutes an
pleading of
t
argues
however
that Model
Plaintiff
controversy as to TD-60. He
mission of
type model “of
same
is a track
TD-60
The
conclusion as follows.
to this
builds
complaint
construction as the
general make and
other
alleges
“an
contro-
actual
tractors,”
of
and that there-
models
three
versy
and
between
defend-
exists
court, having
jurisdiction
taken
fore
defendant,
ant,
as hereinbefore set
in that
controversy as
determine the
now
forth,
claiming
and is
has claimed
*
*
properly
TD-60,
*
models, could
extend
three
other
infringe
plaintiff’s tractors
*
*
*
include
whether
its decree
or
said Letters Patent
defendant’s
notice of
not the
included
is “that
in the answer
an actual
denial
The
that model.
between
any
exists
or
defendant,
respect
defendant,
plaintiff argues
in
In this
that de-
and
complaint or
in its
bill of
other-
answer
amended
fendant admitted
that Model
in
wise or at
all,
type
claiming
plain-
track
is now
was
tractor similar in
TD-60
style
infringe
defend-
construction to the
three
tractors
and
other
tiff’s
patent.”
quote
plain-
'That
this
the brief
letters
leaves
models.
of
ant’s
n
by pars.
tiff-appellee: “Admitted
therefore
that de-
IX and
undenied and
admitted
infringement
claimed"
“has
answer to
amended
fendant
XI of the
the.
com-
* *
paragraphs ap-
*.
In
plaint
when the
these
perhaps did
claim
tractor,
we would come
pellant
filed. Whether
not
admits that
TD-60
was
allegations
if
described
‘Plaintiff’s
the same conclusion
these
Exhibit
to
were
shown
any
E,’
infringe
of appellant’s
others in
does not
modified
answer
say,
E,’
-for
are
‘Plaintiff’s
patents.
need not
there
other al-
Exhibit
ad-
we
thus
mitted,
be
legations
photographs
must
related to
contains
these.
nineteen
of
above, plaintiff’s
tractor, showing
complete
we have said
sole basis
TD-60
As
“controversy”
the letter which
of
and the details
its
of a
tractor
construction.
tractor,
illustrated, is
TD-60
thus
The
defendant
Nevada
the U. S. District Court for
style
general
the same
against plaintiff
track
tractor
alleging infringe-
models
other three
construction as the
ment of
certain of
patents,
in-
eluding
patents
some
tractors.”
in this
involved
action.
In view
allegations
of these
words,
argument is that
In
the further fact that
in its
an-
non-infringement
defendant admitted
since
swer to
the amended
admitted
Exhibit E
shown in
as to
non-infringement by plaintiff,
the trial
complaint,
that admis-
grant-
court did not abuse its discretion in
E,”
“Exhibit
admitted
sion defendant also
ing
injunction against further claims
style
similarity in
turn admitted
the_
plaintiff’s
as to
construction.
properly
which were
involved
this suit.
the amended
An examination of
point urged by
-^he *ast
defendant is
allega
is no
that there
complaint discloses
court
ordering,
the trial
erred m
«at
judging
_ad
Model TD-60 was
effect
tion
decreeing
an<^
depositions
that the
make and construe
general
same
“of the
«ken and filed herein and the exhibits
models of tractors.”
three
the other
tion as
any
identified therein
be used in
action
attached to
exhibits
The
containing photographs
a District
Court
the United States
models can
}n
“ ™hldh
any
'defendant and
allegation to this
place of an
not take the
privies
parties,
thelr customers or
respective
are
reading in
Ir
effect,
extent
at least
of whether or
ac-
similarity by defendant
an admission
subject
Pon involves the same
matter as.is
deny specifically
his failure
because
«volved herein.
experts
only
ascertained
can
what
The
the District
physics, patents
Court in
this
knowledge of
awith
respect
reads
Deposition
as follows:
by plaintiff2
cases cited
“5.
patent law.
cause,
and filed in
taken
it is
exhibits
to indicate
might seem
depositions
identified in said
and filed
extend to “all
here
decree to
proper for the
in, may
be used in
plain
action
in the Dis
manufactured
similar machines
tiff,”
States,
trict Court
the United
in which
point.
Caterpillar
Company,
Tractor
defendant.
an<
the contention of the
remains
There
Corn-Pany>
pla-intiif,International Harvester
district court erred in
that the
*7
auy
privies
0 tlmir customers or
o
against
injunction
further
granting an
r
are arties
assignment
infringement. This
charges of
Plaintiff contends that the court’s
to the court’s de-
seems to relate
decree
of error
reasonably
cannot
be
broadly
construed
respecting
models of tractors
four
all
cree
states,
but
complaint.
as
intent
that the
plaintiff’s
The con-
manifest
in
described
depositions
the decree is that the
un-
there were insufficient
is that
tention
may
only
be
in
used
suits relating
alleged in the
to
facts
amended
the
controverted
subject
matter
injunctive
justify
instant suit.
complaint to
decree.
urges
Defendant
in
declaratory
its brief
judgment
that the
The
act
provision
in
improper
event is
“fur
provides,
400(2),
28
that
in
U.S.C.A.
a
§
decree
final
on motion for
declaratory judg
a
on the
relief based on
ther
pleadings, but that it “does
may
not
granted
and,
be
ment
necessary
decree
whenever
any objection,
cannot have
if
proper,”
this
and it is well
court
settled
necessary,
any provision
deems it
to
injunction
whether or not an
be
in a
that
shall
providing
decree
for the subsequent
resting
use of
granted is matter
in
the sound
depositions in the limited manner
McCarthy
set forth
trial court.
discretion
Bunker
above.” We consider this as
stipulation
Mining
Co.,
Hill & Sullivan
& C.
parties
both
that the
decree
Cir., 1908,
164 F.
940.
the trial
The
9
undenied
respect
court in this
be modified
so
allegations of
amended
as to
set
depositions
limit
use of
relating
suits
the claim
out
contained
quoted
subject
to the same
matter as above as
instant
in the letter
related
suit.
plaintiff’s
models of
tractors.
three
It is
previous
further undenied that certain
The decree of the district court is re
been
had
suits filed
claims
versed
far
as it relates to Model TD-60.
2
Corp.
Corp.
Booth Fisheries
Winklo-Munning
v. General
v. Hanson-Van
Corp., D.C.,
F.Supp. 208;
Co.,
Foods
27
Unit
Cir.,
June
TD-60; charge used. infringement related “to all the aforesaid should be affirmed. Caterpillar 1 4 Reinharts, Inc., 1938. Tractor November 2 Cir., April 6, Co., 9 85 628. F.2d Procedure, Procedure, Rules of Federal Rules of Civil Federal Civil Rule following 8(b), (d). '8(d), Rule U.S.C.A. section 723c.