Edward F. NEIDHART, Appellant, v. NEIDHART S.A. et al. The GEORGE HYMAN CONSTRUCTION COMPANY, Appellant, v. SPIROLL CORPORATION, LTD.
Nos. 72-1792, 73-1181
United States Court of Appeals, District of Columbia Circuit
Decided Jan. 10, 1975
Rehearing Denied Feb. 18, 1975
510 F.2d 760
Argued Feb. 28, 1974.
We affirm the Secretary‘s action save to the extent that Quinn‘s evidentiary proffer was rejected. To the end that it may now be considered, we reverse the Secretary‘s action and remand the case to the Secretary for proceedings in harmony with this opinion.
So ordered.
Thomas F. McWilliams, Chicago, Ill., of the bar of the Supreme Court of Illinois, pro hac vice, by special leave of court for appellant in 72-1792. Edward F. McKie, Jr., and Neal E. Abrams, Washington, D.C., entered an appearance for appellant in 72-1792.
Saul Jecies, New York City, for appellee in 72-1792.
Daniel C. Kaufman, Washington, D.C., with whom Jack L. Lahr, Washington, D.C., was on the brief for appellant in No. 73-1181.
Allan J. Topol, Washington, D.C., with whom Herbert Dym, Washington, D.C., was on the brief, for appellee in 73-1181.
Before TAMM and LEVENTHAL, Circuit Judges, and GEORGE L. HART, Jr.,* United States District Judge for the District of Columbia.
The sole question before us in these cases is whether the procedures authorized by section 293 of the Patent Codification Act,
In Neidhart v. Neidhart, S.A., No. 72-1792, plaintiff-appellant Edward Neidhart, an American citizen residing in Illinois, filed suit in district court for the District of Columbia against defendants-appellees Neidhart, S.A., a Swiss corporation believed to own legal title to certain United States patents, and against Maria and Rico Neidhart, Swiss citizens and residents believed to be respectively sole owner and Chief Managing Officer of Neidhart S.A.1 Appellant‘s complaint alleges that Neidhart S.A. breached a sublicensing agreement which granted him the exclusive right to award sublicenses under the patents in question. Appellant sought a judgment declaring the validity of the sublicensing agreement and a modification thereof, and establishing that he is entitled to receive royalties due. Appellant also requested that the court permanently enjoin Neidhart S.A. from interfering and harassing him in the exercise of his sublicense rights.
In George Hyman Construction Co. v. Spiroll Corp., Ltd., No. 73-1181, plaintiff-appellant George Hyman Construction Co. (“Hyman“), a Maryland corporation, filed suit in district court for the District of Columbia against Spiroll Corp., Ltd. (“Spiroll“), a Canadian corporation owning certain United States patents. The complaint, as that in Neidhart, alleges that Spiroll breached an agreement which granted Hyman an exclusive territorial use license of the Spiroll patents. Hyman sought a judgment declaring the existence and validity of the license, an order directing Spiroll‘s specific performance, preliminary and permanent injunctions restraining Spiroll from granting conflicting licenses, and monetary damages.
Both plaintiffs-appellants attempted service of process pursuant to
Thus, these cases involve the Patent Codification Act,
Every patentee not residing in the United States may file in the Patent Office a written designation stating the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder. If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the District of Columbia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs. The court shall have the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court.
The legislative history provides some insight into the problems Congress sought to remedy through section 293. During extensive hearings on the proposed bill, the Department of State noted that section 293 (introduced as section 252)
has been added for the benefit of American residents desiring to bring action against foreign owners of United States patents. At the present time, American manufacturers threatened by charges of infringement of United States patents by persons resident abroad are especially handicapped by inability to bring suit for declaratory judgment.2
Testimony by the Chief of the Patent Litigation Unit of the Department of Justice was practically identical to this statement.3 The only other reference to section 293 in the hearings is a report by the Patent Law Committee of the Bar Association of the City of New York which offered the following addition to the section:
Acceptance of the grant of a patent hereafter shall constitute an irrevocable consent to be sued as provided in this section and appointment of the Commissioner of Patents as agent of the patentee to receive service of process under this section.
1951 Hearings 222. The suggestion was not incorporated into the bill. The House Report4 and the Senate Report5 characterize section 293 as being part of “a group of sections relating to remedy for infringement of a patent . . . .”6 Both reports then note that
“[s]ection 293 is a new section that is needed on some occasions to obtain jurisdiction over foreign patent owners that do not reside in the United States.”7
In light of the hearings and the Congressional characterization in the reports, it is clear that “occasions” specifically refers to suits concerning the validity or infringement of patents. The least that may be adduced from the legislative history is that Congress most assuredly did not contemplate application of section 293 to actions to determine license rights. Moreover, one commentator, well acquainted with the intricacies of the Act, opined that section 293 “will enable, for example, jurisdiction over a patentee residing in a foreign country to be obtained in a declaratory judgment action involving the validity or infringement of the patent.”8 Again, controversies concerning license rights are notably absent from the examples cited.
Our interpretation of the scope of section 293 finds abundant support in case law. Since its enactment, section 293 has been primarily invoked in cases where plaintiffs sought declaratory judgments involving patent validity or infringement. See Abington Textile Machinery Works v. Carding Specialists (Canada), Ltd., 249 F.Supp. 823 (D.D.C. 1965); Scandia House Enterprises, Inc. v. Dam Things Establishment, 243 F.Supp. 450 (D.D.C.1965); Sealol Corporation v. Flexibox, Ltd., 242 F.Supp. 693 (D.D.C. 1965). See also Etablissements Henry-Le Paute v. American Greiner Electronics, Inc., 172 F.Supp. 228 (D.Conn.1959); Webster-Chicago Corp. v. Holstensson, 132 F.Supp. 287 (D.D.C.1955). In these cases, the applicability of section 293 was manifest, thus obviating the necessity for detailed analysis of the scope of “proceedings affecting the patent or rights thereunder.” Only one reported case has made such an analysis. North Branch Products, Inc. v. Fisher, 179 F.Supp. 843 (D.D.C.), rev‘d on other grounds, 109 U.S.App.D.C. 182, 284 F.2d 611 (1960), cert. denied, 365 U.S. 827, 81 S.Ct. 713, 5 L.Ed.2d 705 (1961).
In North Branch, an action for a declaratory judgment concerning title to patents, the court held that the phrase “proceedings affecting the patent or rights thereunder” should be construed as synonymous with “actions under the patent laws of the United States” [see
[1] that the Section is included in the codification of laws relating to patents would seem to lead to the conclusion that the Section should be construed as being limited to actions under the patent laws, rather than extended to all actions affecting patents generally . . . [and 2] that otherwise a constitutional question would arise . . . [i. e.] a possible lack of any constitutional basis for jurisdiction either over the subject matter or over the person. Id. at 845.
While we agree with the rationale of North Branch, we would not go so far as to say that
In addition to the North Branch rationale, traditional concepts of federal jurisdiction in cases involving patents support our conclusion. It is, of course, well settled that not all cases somehow involving patents are within the domain of federal courts. See, e. g., Luckett v. Delpark, Inc., 270 U.S. 496, 46 S.Ct. 397, 70 L.Ed. 703 (1926); Wilson v. Sanford, 51 U.S. (10 How.) 99, 13 L.Ed. 344 (1850). However, amicus curiae, Department of Justice, asserts that “proceedings affecting the patent or rights thereunder” means “any matter affecting a patent or rights thereunder, whether the claim falls within the jurisdiction of the state courts or the federal courts.” Amicus curiae‘s Br. at 13. Amicus curiae then concludes that Congress, through section 293, “has combined a grant of subject matter jurisdiction which springs into operation if the patentee cannot be sued elsewhere, with a long-arm statute conferring personal jurisdiction over nonresident patentees who fail to designate an agent for service of process.” Id. at 14-15. We cannot agree with this analysis. We find no indication whatsoever that Congress intended to abrogate the traditional separation of state court-federal court jurisdiction whenever a nonresident patentee is involved.
The instant cases, while termed patent license agreement controversies, are, quite simply, contract disputes. See 4 Walker on Patents §§ 380, 420 (Deller ed. 1965). The rights of the parties derive solely from the terms of their contracts. Appellants plainly have no rights under the patents; their rights, if any, are only those emanating from the “four corners” of their respective agreements. We see no reason to bring such matters within the realm of the federal judiciary nor do we think Congress intended such a result.10
In sum, we hold that where plaintiffs seek merely to resolve the existence, vel non, of patent license agreements and their rights thereunder, section 293 is not available to effectuate service of process on nonresident patentees.
Affirmed.
In my view, the special long arm jurisdiction provided by § 293 of the Patent Codification Act of 1952,
1. Generally, of course, a suit about a patent license is not a suit “arising under any Act of Congress relating to patents” within the meaning of
In sum, § 293 gives the District Court jurisdiction over the person of the foreign patentee, limited to “proceedings affecting the patent or rights thereunder.” It was intended as a “long arm statute,”2 which operates, in the standard mold of long arm statutes, to permit the court to act as if the absent defendant had been directly served with respect to those matters on which he had initiated contacts with the jurisdiction.3
In the North Branch case4 Judge Holtzoff stated that
As to legislative purpose, § 293 was intended to cope with the problem that nonresidents could obtain valuable United States patent rights, and yet stay beyond the reach of both state and Federal process as long as they were not present or “doing business” within the United States. Congress sought to assure Americans a forum in the United States for proceedings “affecting the patent or rights thereunder.” The phrasing is in the disjunctive—including not only proceedings affecting the patent but proceedings affecting rights under the patent. The natural meaning of the words used conveys, to me, the thought that a proceeding to determine, e. g., the extent of rights granted by an exclusive license granted by the patentee, or the validity of the license, is a “proceeding affecting rights under the patent.”
The legislative history is not explicit—if it were, presumably we would not have a case for decision—but such as it is, it seems to me to support my view. There were no hearings in the Senate. The hearings in the House present the comments of the State Department on what was then § 252 of the bill, and became § 293 of Title 35. The Department of State commented in a letter:
4. Section 252, “Service and notice; nonresident patentee.“—This section provides that a nonresident patentee may designate by notice to the Patent Office a person within the United States on whom process or notice may be served and that in lieu of such designation such notice or process may be served upon the Commissioner. The Department understands that this provision has been added for the benefit of American residents desiring to bring action against foreign owners of United States patents. At the present time American manufacturers threatened by charges of infringement of United States patents by persons resident abroad are especially handicapped by inability to bring suit for declaratory judgment. Most foreign countries in their patent laws require foreign owners of patents issued by them to have resident agents upon whom service may be made.7
The last three sentences were echoed in the testimony of a Department of Justice spokesman.8
The House and Senate Reports say only this about § 293: “Section 293 is a new section that is needed on some occasions to obtain jurisdiction over foreign patent owners that do not reside in the United States.”9 What occasions are “some occasions“? The Committee Reports do not say. We have to go back to the language of the statute and any other indications of legislative intent.
I take issue with the majority opinion in its statement that the House and Senate Reports describe Section 293 as “part of ‘a group of sections relating to remedy for infringement.’ ” These words appear in those Reports in this sentence: “Beginning with 281 is a group of sections relating to remedy for infringement of a patent, the suit in the courts.”10 That “group of sections” is sections 281 through 287, inclusive, which relate to the presumption of validity, defenses to an infringement action, injunctions, damages, attorney‘s fees, limitations and marking and notice. But the group of sections dealing with court suits for infringement plainly stops before section 292—a criminal statute for falsely marking an article as patented. And § 293 is still another subject.
2. The District Court had subject matter jurisdiction of this case.
Section 293 confers personal jurisdiction on the foreign patentee—either by service on his agent for process, or, if no such agent has been appointed, by publication or other service as the court directs. Upon such service, the District Court has jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court.
But what jurisdiction may the District Court for the District of Columbia exercise over a foreign patentee within its personal jurisdiction? It may exercise the limited subject matter jurisdiction provided by
The District Court for the District of Columbia also has jurisdiction to decide any controversy between the citizen of a state and the subject of a foreign state under the diversity of citizenship statute, provided there is the jurisdictional amount of $10,000.
I see no constitutional issue in a broad reading of § 293.13 Article III of the Constitution permits Congress to give a Federal court jurisdiction to entertain suits between citizens of the states of the United States and subjects of a foreign state. There may be situations that come within the literal language of § 293 but not Article III—conceivably, defendants who are Americans not residing in the United States, or plaintiffs who are not United States citizens—but they can be excised either as included in the statute but marginal and severable,14 or, more likely, as not included within the statute, whose legislative history makes clear (see text accompanying note 7 supra) that this was a provision “for the benefit of American residents desiring to bring action against foreign owners of United States patents.”
I respectfully dissent.
Notes
Every patentee not residing in the United States may file in the Patent Office a written designation stating the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder. If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the District of Columbia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs. The court shall have the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court.
Beginning with 281 is a group of sections relating to remedy for infringement of a patent, the suit in the courts. The present statutes on this matter are in confusion
See Note on Federal and State Court Jurisdiction in Patent Matters, in Bator, Mishkin, Shapiro & Wechsler, Hart and Wechsler‘s The Federal Courts and the Federal System 874-79 (2d ed. 1973).The United States Government apparently argues, amicus curiae, that diversity of citizenship and $10,000 amount are not required. They certainly were not required when § 293 was enacted in 1952, for the District Court for the District of Columbia then had the common law and equity jurisdiction of a state court, inherited from Maryland. Pang-Tsu Mow v. Republic of China, 91 U.S.App.D.C. 324, 327, 201 F.2d 195, 198 (1952), cert. denied, 345 U.S. 925, 73 S.Ct. 784, 97 L.Ed. 1356 (1953). It therefore had subject matter jurisdiction not only as a Federal court, over matters arising under the federal patent laws, but also as a state court over contract cases affecting rights under patents, such as license claims. However, the District of Columbia Court Reorganization Act of 1970, 84 Stat. 475, transferred to the Superior Court of the District of Columbia, the general equity jurisdiction formerly held by the District Court.
United States v. Farbenfabriken Bayer, A.G., 1968 Trade Cases 72,569 (D.C.D.C.), leave to appeal denied, C.A.D.C. No. 586-68, Misc. No. 3277, 1968 Trade Cases 72,570, appeal dismissed, 393 U.S. 216, 89 S.Ct. 397, 21 L.Ed.2d 358, leave to petition for cert. denied, 393 U.S. 958, 89 S.Ct. 412, 21 L.Ed.2d 384, cert. denied, 393 U.S. 959, 89 S.Ct. 397, 21 L.Ed.2d 373 (1968); United States v. Glaxo Group Ltd., 1970 Trade Cases 73,000 (D.C.D.C.). The Glaxo case subsequently proceeded to judgment on the merits, but the issue of personal jurisdiction over the defendants under
In providing one of those narrow readings, Justice Holmes put it in American Well Works Co. v. Layne & Bowler Co., 241 U.S. 257, 260, 36 S.Ct. 585, 586, 60 L.Ed. 987 (1916): “A suit arises under the law that creates the cause of action.” The vitality of this Holmes view is in doubt. Certainly the correct construction of the “arising under” clause must take into account the development that the putative infringer may bring an action for a declaratory judgment of nonvalidity or non-infringement. E. Edelmann & Co. v. Triple-A Specialty Co., 88 F.2d 852 (7th Cir. 1937). Such actions have become numerous, and the Supreme Court has passed on the merits of such actions without question as to jurisdiction. Bator, Mishkin, Shapiro & Wechsler, supra, at 896.