*2
MEDINA,
Before
WATERMAN and
MOORE,
Judges.
Circuit
MEDINA,
Judge.
Circuit
parties
here are necktie manufac-
turers,
plaintiff appeals
judg-
from a
ment
the United States District Court
York,
for the Western District of New
Burke,
dismissing
Judge,
P.
Harold
with-
prejudice
complaint seeking
out
invalidity
declaration
of defend-
patent
particular
on a
ant’s
necktie man-
by defendant,
and sold
ufactured
or of
non-infringement
patent by
said
plaintiff’s.
necktie of
We
properly
hold
was
dis-
ground
missed
allege
it fails under the
Declaratory Judgment Act, 28 U.S.C. §
Opinion
reported.
below
breaking this
public policy in
cause of the
patent on a
owns
Defendant
preventing
“racket,”
invalid
an
sheet
consisting
inner
an outer
remaining
fiber,
“as
the art
from
polyester
composed of Dacron
both
(Bresnick
popu
v. United
scarecrow”
ais
states that
and defendant
*3
239,
Corp., Cir.,. 1943,
F.2d
139
washability
Vitamin
2
due
product
of its
lar
because
remedy
declaratory
be
242),
should
the
having
same coefficient
the
to the sheets
patent
liberality in the
complaint al
construed with
shrinkage.
Plaintiff’s
Almy
general. Dewey
Chem
in
&
field as
leges
represented to
(1)
“has
:
defendant
Cir.,
Inc.,
Anode,
3
ical Co. v. American
to
industry,
so
and
continues
the
now
1943,
denied,
68,
320 U.S.
patent,
137 F.2d
cert.
represent,
of said
that because
454;
761,
70,
Treemond
64 S.Ct.
88 L.Ed.
may make,
and
use
alone
[d]efendant
1941,
Schering Corp., Cir.,
122
3
Co. v.
necktie;
(2)
“has
plaintiff
a
sell” such
however,
not,
F.2d 702. All this does
designed
plaintiff
believes
necktie” and
justicia
infringe
requirement
eliminate the
that
this
necktie does
controversy
alleges
in the com
ble
be shown
patent,
plaintiff
defendant’s
which
Hawley
plaint.
United
Products Co. v.
invalid;
(3) plaintiff
submitted
Co., Cir., 1958,
1
F.2d
single
Truck
259
sample
and' asked
to defendant
69,
acknowledgment
75-76.
for an
that such
patent so
does not
defendant’s
Several elements must be con
“may freely
that
it
manufactured and
be
determining
justi
sidered in
whether
sold”; (4)
“In
defendant answered that
ciable
has
shown
been
by
opinion
our
this necktie is covered”
patent
(1)
position
case:
of the
the
patent,
which has been in existence
declaratory plaintiff;
(2)
the nature
“respected”
years,
for nine
against him;
(3)
the threat made
expect”
plaintiff
defendant “shall
party making the threat and whether his
respect
patent.”
“will
patent
action can be attributed
to
807;
Borchard, supra,
page
owner.
at
Supreme
has stated
Court
Note,
Controversy
Justiciable
Under the
between
distinction
familiar
Declaratory Judgment
Federal
Act and
definite,
contro
and substantial
concrete
Rights,
the Exercise of
22 Geo.
Patent
hypo
justiciable,
versies,
are
which
63,
(1953).
64-65
Wash.L.Rev.
ones, which
thetical,
or academic
abstract
element,
degree,
first
while
ex
to the
not,
to be
As
is one
are
plaintiff
early
by
Aetna
basis.
cases
plored
case
on a
infringing
engaged
Haworth, 1937,
actually
con
300 U.S.
be
Life Ins. Co. v.
617;
longer
law, and it is
461,
duct,
227, 239-241,
81 L.Ed.
this is
57 S.Ct.
plaintiff
en
either be
Maryland Casualty
&
Pacific Coal
Co. v.
now sufficient
selling
using
manufacturing,
gaged
or
270, 273,
Co., 1941,
61
S.Ct.
312 U.S.
Oil
invention,
the im
826;
or that he has
510,
Public Service Comm.
85 L.Ed.
ability
Wycoff Co., 1952,
do so.
intention
344 U.S.
v.
mediate
of Utah
Corp.
236,
Tape
237, 241-244,
Minnesota Min
v.
97 L.Ed.
Technical
73 S.Ct.
Co.,
1952,
ing Mfg.
Cir.,
Turning
particular,
2
F.2d
200
field in
to the
1957,
Grindle, Cir.,
availability
878;
876,
9
Welch
be noted that the
it
678;
671,
destroyed
Baker Oil
declaratory
Crowell v.
F.2d
relief has
251
1004,
Cir., 1944,
1003,
gained
by
patentees
Tools,
143 F.2d
9
mani
“racket”
which
93,
denied,
advantages by
323 U.S.
S.Ct.
threat
fold
the device of
cert.
608;
ening alleged infringers
Industrial
United States
L.Ed.
or their custom
might
Chemicals,
Inc. v. Carbide
Carbon
ers with lawsuits which
never be
Corp., S.D.N.Y.1946,
brought
always
or,
brought,
could
be Chemicals
898;
F.Supp.
General Electric Co.
prejudice, without the
dismissed without
Corp.,
Refrigeration
taking
possibility
steps
Patents
W.D.N.Y.
persons
of such
78;
Borchard, supra
F.Supp.
validity
patentee’s
to ascertain the
of the
807;
Geo.Wash.L.Rev., supra
Declaratory
Judg
page
Borchard,
claims.
at
equally true;
(2d
1941).
ments, pp.
The converse
69-71.
803-04
ed.
Be-
at
activities,
that where there is no
however,
hardly
actual manufac-
profit-
are
ture,
sale,
ability
in-
use or
and no immediate
able
potential
since
from
varies
ability
product
practice
product
tention and
inven-
industry
in-
controversy.
tion,
dustry.
there is no
Dewey Almy&
American
Chemical Co. v.
placed
Major stress should be
Anode,
70;
Inc., supra,
Fash
137 F.2d at
plaintiff
on the “definite”
intention
Clayton,
F.Supp.
D.N.Mex.1948, 78
to take “immediate” action
potential
utilize
explanation
prin-
361. The
for these
be
should
and this intention
ciples
economically
is that
would
it
be
preparatory
out
“evident” from the
require
plaintiff
wasteful to
to embark
Tape
complaint.
lined in its
Technical
manufacture,
program
on an actual
*4
Mfg. Co.,
Mining
Corp. v. Minnesota
&
use or sale which
turn out to be
supra,
878; Borchard, supra
200 F.2d at
illegal (Crowell
Tools, supra,
v. Baker Oil
807;
page
Rev., supra
at
22 Geo.Wash.L.
1004) ;
hand,
143 F.2d at
other
a
Reading
complaint
at 70-71.
in the
vague
unspecific
practice
“desire” to
say
plaintiff
instant
we
case
cannot
an
invention if a
should turn out
burden,
consequently
has met this
hy-
to be invalid smacks too much of the
complaint
properly
we think the
was
pothetical
allowing
contingent,
plaintiff
dismissed because
has not shown
declaratory remedy
in
such
situa-
proper position
itself to
in a
or to-
be
unfairly
tion
subject
would
the defendant
proper standing
challenge
have
defend
to the burdens of
Geo.
lawsuit.
holding
patent.
ant’s
terpreted
in
Our
be
must
Wash.L.Rev., supra
70-71; Russell,
at
light
in the
of the fact that the
Aspects Declaratory
Some Patent
of
Pro-
complaint
preju
was dismissed without
cedure, 32 J.Pat.Off.Soc’y 504, 525-30
really
definitely
plaintiff
dice.
If
does
(1950).
contemplate
undertaking-
the immediate
manufacture,
use
sale of its
In
not con
the instant
it is
legally barred,
necktie if not
it will have
plaintiff
upon
has entered
tended
opportunity
an
to make this clear in a
manufacture,
an
of
actual
use or sale
alleges
new
wherein it
it has the immediate
necktie. Whether
relevant facts from which the court can
ability
doing
of
is
intention
so
infringe-
determine that it is “about to
plaintiff
question. The
difficult
may
fact that
prejudicial
or take some action which is
have made its
patentee.”
to
chard, supra
interests of the
Bor
purpose
provoking
for the
of
a lawsuit
page
at
require
does not itself
no
that we hold
justiciable controversy exists. Cf. Evers We do not understand how our brother
Dwyer, 1958,
358 U.S.
79 S.Ct.
fairly
Waterman in his dissent can
con-
L.Ed.2d 222.
But see United
just
strue what we have
written as re-
Chemicals,
Industrial
Inc.
plaintiff
v. Car
quiring
“to do no more than
Corp., supra,
language
bide & Carbon Chemicals
complaint.”
redraft minor
in its
single
F.Supp.
act,
at 898. This
as de
requirement
jus-
The fundamental
points out,
quite
fendant
is
insubstantial
ticiable
plaint
be shown in the com-
comparison
actually
in
with the
seems to us under the cited au-
supporting
taken
certain of the
plainly
in
eases
require
plaintiff
thorities
allege
(Technical
jurisdiction
Tape Corp.
the relevant facts from which the
Mining Mfg. Co., supra;
Minnesota
plaintiff
court can determine that
is about
Grindle, supra;
Welch v.
General Electric
to
prejudicial
or take some action which is
Refrigeration
Corp.,
Co. v.
Patents
su
to the
pat-
interests of the
although
;
pra)
very
it is not
supreme
much
irony
less
entee.
It would be the
if
ruling
than what was held
opened
in
sufficient
some in
otherwise we
the door
Tools,
others. Crowell v. Baker Oil
su
place
a new “racket” to take of
pra;
Chemicals,
declaratory
United States Industrial
remedy
one the
was de-
signed
extirpate.
Inc. v. Carbide & Carbon
expa-
Chemicals
We need supra.
Corp.,
Quantitative comparisons
on the methods
tiate
which human in-
genuity
devising
capable
respect
take
sent its
litigate
of
intentions
or to
rights,
advantage
patentees
no
expense
whose
issue
at substantial
others,
deserving
protection
light
less
may
than
such intention exists.
In
significance
long-standing policy
liberality
in the
our
be of minimal
to
general
things.
declaratory judgment
fol- ward
In thus
suits for
scheme of
agree
lowing
patent field, Dewey
Almy
the settled law we cannot
Chemical
captious
merely indulging
Anode, Inc.,
we are
Co. American
Affirmed. prejudice without below. Judge (dissent- WATERMAN, Circuit
ing). court, ap- opinion of the
As I read the than re- no more pellant to do language complaint to in its minor draft colleagues
satisfy my *5 Although dismissal exists. appellant to prejudice permits without I believe a new action commence proceeded to should have court district Anthony MAMO, Appellant, complaint. present upon the the merits concede, or are My appear to brothers al., Appellees. BEVERLY et MFG. CO. has, assume, appellant prepared No. 19171. omission, all that forth set but one with Appeals United States Court of justiciable con- to establish Fifth Circuit. Judgment Declaratory troversy under March 1963. They do not con- Act, 2201. 28 U.S.C. § Rehearing May Denied appellant’s Superba’s reply to tend as an assertion insufficient letter is right precise na- patent. The under infringing object allegedly ture proposes is es- appellant to manufacture already by sample produced tablished Superba’s inspection. recognizes majority The industry may de- be that it well sample equivalent signing a necktie is the preparatory elaborate more cases, which, have been found in other abil- an immediate to establish
sufficient infringing engage allegedly ity only fatal defect that the The conduct. Wembley’s complaint majority finds says say appellant about or fails to
what manufacture. intention to immediate inartfully well be clearly respect. It is stat- in this drafted Wembley “proposes” manufac- ed that provided dacron tie it is found ture patent. Superba’s Appel-
not to misrepre- apparent reason to lant has