*1 practical standpoint, From a an affirm- INC., EQUIPMENT, WALKER PROCESS summary judgments ance of the in this Plaintiff-Appellant, essence, require, case would in a con- case de novo sideration patents adequate treatment in CORPORATION, Defendant- prior suit and the art. This we are Appellee. prepared qualified do, neither nor No. 14880. given present state of the record. judicial
Effective administration dictates United States Court required this should not be of a court of Seventh Circuit. appeals. Jan. attempting In this we are not Rehearing Denied March express opin- decide issues fact and (En Banc). validity patents ion on the of the in suit. make no
We on the opinion holdings in Bendix
case in the courts of the Fourth Circuit. may by comity The Bendix decision
given great weight by the district court testimony
after it hears in a trial of the
instant case on the merits. That con-
sideration is committed to the discretion
of the trial court.
Finally, suggest strongly defendants plaintiffs acting good in are pursuing litigation
faith this and in
filing a multitude of similar actions ju- other defendants in other effect, they charge plain-
risdictions. guilty litigious tiffs are harassment pursuit agreements. of further license Swygert, Judge, Circuit dissented. plaintiffs We have assumed here are acting good If, faith. on a on the trial merits, prove this should confidence to be
ill-founded, power it lies within the impose statutory
the district court to awarding attorney
sanction of fees. We have as little enthu- § 285.
siasm for unwarranted as we summary improper judg-
do use of procedures actions. apparent plaintiffs’ prayer
It is
asking patents us to hold the Eisler valid misplaced and cannot be considéred. foregoing reasons, For the hold that we
summary improperly granted in these cases before us oh'
peal. judgments below are reversed causes, and the are remanded dis- proceedings
trict court for further opinion.
sistent
Reversed and remanded. *2 controversy, of an actual Walk
absence against declaratory judgment action (FMC).1 Corporation its the F.M.C. sought pat have to Walker by FMC, U.S. Patent No. ent owned Digestion “Sewage 2,777,815, entitled Process”, invalid, unenforce declared infringed able, by any and not use digester equipment. stirrer Walker’s Walker manufactures and sells “Gas- digester for use in lifter” stirrers sew- sewage age digestion processes treat- competes plants. with FMC Walk- patented process er and is the owner aof digestion sewage sludge, for the gas to involves continuous recirculation sludge. homogeneous maintain While only equipment, pos- Walker sells sible for Walker’s to alleged- equipment processes ly process patent, covered FMC’s al- though equipment need uses. be so used and has other complaint alleges Walker’s amended persuade prospec- attempts that FMC to competing tive customers of manufactur- they equipment ers that use FMC should its accordance with that, they equipment use the manufacturer, competing should, in Haight, A. J. Mer- Edward Charles protect pos- order to themselves riam, 111., Marshall, Chicago, William A. infringement, purchase sible a license to Chicago, 111.,Merriam, Marshall, Shapiro patented process use the from FMC. 111., Klose, Chicago, counsel, & for is further that because of pellant. prospective FMC’s acts some Walker’s Clement, 111., purchase Chicago, James for to W. customers have refused appellee. equipment, de- while others mand, purchase, a condition of HASTINGS, Judge, Before Chief guaran- Walker furnish “hold harmless” Judges. SWYGERT, KILEY and Circuit against patent ties to defend in- them fringement actions. Judge. HASTINGS, Chief one of its Walker asserts that at least customers, appeal Process has a This is an which Walker agreement, used, Equipment, indemnity from an Inc. order of ent suit United District Court and is continue States believed Walker dismissing, use, in a Northern District Illinois infringes patent. apparently for lack because of the which seeking declaration, controversy whether or not “In of actual within a case such sought. Any except jurisdiction, respect further is or could be its relief taxes, force and such shall have the court of the United declaration Federal States, upon filing appropriate or decree and effect of a final rights pleading, may shall be reviewable as such.” declare the party any interested relations § brought although particular May, 1960, suit that troversy FMC was termi- in issue in that case Walker and one its Carolina, asserts, so, City Greensboro, be- North nated. This is Walker charges charging City with in- cause the same basis of Greensboro charg- made in the ing to exist. active inducement of continues While Walker with *3 charges exists, fringement patent. of Walker was the basis for the same certain, on motion since in view of our construction of dismissed from the suit charges subject actual to in North Walker’s that it was not Lacking charges, of hold do not exist. actual Carolina. Because agreement Greensboro, declaratory maintain a harmless however, with Walker’s judgment to depends upon mean- defended that action. action the Walker ing Judgment Declaratory pat- Act. The district court held that FMC’s infringed,2 ent and on was valid but Judgment Declaratory reversed, peal, appeals hold- the court of rights, rather created no but Act ing City by of the used the that remedy created a new to ad with which sludge digestion of Greensboro for the judicate existing rights. Aralac, v. Inc. infringe patent. FMC did not the See America, Cir., Corporation 166 Hat of 3 Cir., City Greensboro, Corporation 4 of respect (1948). 291 to F.2d With (1964). F.2d meaning in re and effect of the Act urges appeal, a On this patents, quote approval lation to we with grounds number of for reversal. Walker the statement of the in this district court patent first that when owner contends a case: infringement charges another with “Prior to the enactment of the through infringe active inducement of Judgment Declaratory Act, party a infringement, contributory ment controversy infringement patent to actual sufficient of exists accused was Declaratory support a suit under the ju- remedy a to obtain a without Judgment proposition is Act. this While dicial determination the merits of of true, begs a of it fundamental patentee the accusation if re- appeal: is, patent that whether the bring fused to suit has, owner in this made viable infringement. in- An accused charges of fringer subject could be made thus Declaratory to harassment. The A studied consideration of Walker’s Judgment in- Act eliminates this complaint amended has convinced us that equity. to It enables the accused se- does not judicial cure a determination any Walker or infringement without hav- customers, at time since the Greens- ing patentee to wait for the to in- litigation, boro kind in- proceedings.” stitute fringement. infringement Whatever charges were the Greensboro leading Aralac, point A case in resolved, were and the contro- Corporation America, v. Hat su Inc. versy by parties terminated, between pra. declaratory precludes Aralac a judgment appeals. court of patent action a owner states, however, that even unless the is in fact accused of allegations respecting infringement by patent it made owner. charges of active inducement view of the fact that are no out there standing charges contributory infringe and FMC of only litiga- ment refer Walker or tion, charges cog- legally justiciable controversy created a there is no be controversy parties. nizable terminated tween the F.Supp. (1962).
2. 208 urged, however, pos- of a manufacturer further infringe sibly that a an actual con- manufacturer whose interests a controversy troversy patent concerning owner a are between the agreements give indemnity exists sufficient limited with manufacturer infringers possible possible in a loss standing action. business has to seek declara
tory judgment regarding
scope
that,
in a
decided
patent.
action,
de-
where
declaratory judgment
'
plain-
publicly
Aralac,
had
supra,
fendant
tiff,
held
to,
one
a letter
where the
owner has not
amade
customers,,
infringement,
direct or con-
forestall
ent,
could not
tributory,
the defendant
plaintiff-manu-
objecting
judicial
facturer,
determination
but rather has made
claim
*4
ground
prod-
the
that
purchasers
on the
plaintiff’s product
that
of the
infringer
a
within
fell
infringing
uct of the
statutorily
by using
process
were
the
cov-
infringing
class of
excluded
patent,
plaintiff-
ered
defendant’s
the
articles,
271
in 35
§
defined
as
manufacturer did not
a
have
sufficient
declaratory
(e).3
for a
Jurisdiction
any
arising
interest in
claim
under
of
because
existed there
patent
action
challenge
the
laws to enable it to
infringe-
charge
contributory
a viable
of
patent
defendant’s
patent
owner
of a
judgment.
The action
ment.
plaintiff’s
The
interest was
infringers
cautioning
of-
possible
legally recog-
an economic interest not
fering
them,
instant
as in the
licenses
nized.
charge
case,
equivalent
is not the
of the
true,
argues,
It is
that
Coup-
infringement
of
found in National
Aralac
product
a
which
ling.
reason,
Coupling
For that
National
by purchasers
was used
in the manu-
distinguished
is
the case at bar.
from
wholly
facture of a
product,
ap-
court
the district
The
manufacture of which involved the al-
affirmed.
leged
pealed
herein is
from
patented process.
use of a
In the
product
may
instant
itself
Affirmed.
by purchasers
be used
in a manner al-
Judge (dissent-
SWYGERT, Circuit
legedly infringing
patented process.
ing).
specialized
Because
use of Walk-
opinion
majority
identifies
The
equipment,
er’s
it is clear that Walker
appeal as
question in this
fundamental
greater
has a
and somewhat different
* *,
patent owner has
“whether
interest than existed in the Aralac case.
infringement.”
charges of
viable
made
Nonetheless, Walker’s interest is no more
con-
its
majority
that
then states
The
than an
interest,
brings
economic
complaint
reveals
of the
sideration
allegation
it within the Aralac rationale.
Walker,
FMC has
that
charge
absence of
a viable
any
at
“or
of Walker’s
ment, Walker’s interest
is insufficient
litigation,
Greensboro
time since the
permit
challenge
Walker to
pat-
infringement.”
I
can-
kind of
ent.
agree.
not
Finally,
citing
Walker,
says
al-
majority
that
the several
relating
Corp.,
legations
complaint
Co. v. Press-Seal Gasket
of Walker’s
Cir.,
(1963),
“licensing program”
come manufacturers on
behalf, assembling various ele- uniting pro- them so as
ments bodies, ar- duce hats or a new hat
ticle, it is manifest cannot to make reason of its mere having sell, of its and the fact
made and sold casein fibers article, manufacturers of the new legal satisfy requirement interest in it has sufficient laws, arising
claim enabling under by declaratory judgment challenge the de- *6 no fendant’s infringement where
has been by plaintiff product but plain- no connection.
tiff has had not claimed that In the instant case equipment is a
the Walker or, example, (such for as casein fibers
steel) is “combined
things manufacture according commodity.” Rather, of a new FMC has .charging currently the use infringes differently, ent. Stated equipment is means
that the Walker process. applying For agree foregoing reasons I cannot that Walk-
with the court’s observation outstanding charges by holding Walker, does that Walker and its interest have a sufficient I reverse
maintain this suit. would
dismissal order.