314 F. Supp. 1187 | S.D.N.Y. | 1970
OPINION
Nashua Corporation (Nashua), the defendant herein, manufactures and sells “Electrofax Paper,” a zinc oxide coated paper used in an electrophotographic process, under a royalty license agreement with Radio Corporation of America (RCA), the owner of patent No. 3,052,539 (’539). This action was commenced by Xerox Corporation (Xerox) against Nashua upon a claim that its manufacture and sale of the paper infringes upon Xerox patent No. 3,121,006 (’006). Nashua, in its answer, denied infringement, counterclaimed against Xerox for a declaratory judgment that ’006 was invalid and asserted a second counterclaim to interplead RCA with Xerox, upon a claim that when related to Nashua’s manufacture, use and sale of Electrofax Paper, RCA’s patent ’539 interferes with Xerox patent ’006. Nashua, under its counterclaim for inter-pleader, seeks an order that RCA be joined as a party defendant to respond to the complaint, and further that the court order Xerox and RCA to inter-plead their respective claims and adjudge the validity of the patent owned by each.
Although Nashua’s invocation of interpleader in this case is novel, its assertion that if the two patents interfere, interpleader should lie because of the risk of multiple liability is not without appeal. Rule 22(1) of the Federal Rules of Civil Procedure authorizes an interpleader action
Nonetheless, the court need not finally decide whether interference between patents provides a proper circumstance for interpleading the patent owners, for the mere assertion by Nashua in its counterclaim that plaintiff’s patent '006 and RCA’s patent ’539 interfere, an allegation vigorously denied by both patent owners, is not by itself sufficient to warrant interpleader. Nashua postulates a situation where two different courts may hold that the two patents do interfere, but the courts may differ as to which has priority, in which event it asserts it would “have double liability because the two courts were in disagreement on the issue of priority.” But whether two patents do or do not interfere is “a mixed question of law and
The court is not prepared to east Xerox and RCA in the role of unwilling litigants where, upon substantial grounds, they challenge the validity of the basis upon which Nashua seeks to force them into adversary positions, while Nashua presents only its own bare conclusions in support of its position. Although parties should be protected against multiple and conflicting liability, and this court is not unmindful of the teaching of Lear, Inc. v. Adkins,
Finally, denial of this counterclaim would not prevent Nashua from having the issue proffered by it determined in actions where true adversaries are parties. In fact, the validity of the Xerox patent is challenged in this very suit by Nashua; the validity of the RCA patent over the Xerox patent has already been litigated in another suit in this court and is now sub judice.
The motions to dismiss Nashua’s counterclaim for interpleader are granted.
. See, e. g., Cantrell v. Wallick, 117 U.S. 689, 694, 6 S.Ct. 970, 29 L.Ed. 1017 (1886); Marvel Specialty Co. v. Bell Hosiery Mills, Inc., 330 F.2d 164, 167 n. 3 (4th Cir.), cert. denied, 379 U.S. 899, 85 S.Ct. 187, 13 LEd.2d 175 (1964); New Jersey Zinc Co. v. Singmaster, 71 F.2d 277 (2d Cir.), cert. denied, 293 U.S. 591, 55 S.Ct. 106, 79 L.Ed. 685 (1934).
. Gf., e. g., Leeds & Catlin Co. v. Victor Talking Machine Co., 213 U.S. 301, 318, 29 S.Ct. 495, 53 L.Ed. 805 (1909); Rubber Co. v. Goodyear, 76 U.S. (9 Wall.) 788, 796, 19 L.Ed. 566 (1869).
. Jurisdiction for the counterclaim, as well as the primary infringement action, is properly grounded on 28 U.S.C. § 1338 (a) (1964) (“any civil action arising under any Act of Congress relating to patents”).
. Fed.R.Civ.P. 22(1); see Stuyve ant Ins. Co. v. Dean Constr. Co., 254 F.Supp. 102, 108-109 (S.D.N.Y.1966), affd per curiam, 382 F.2d 991 (2d Cir. 1967); Girard Trust Co. v. Vance, 4 F.R.D. 255 (E.D.Pa.1945).
. Fed.R.Civ.P. 22(1) ; see Builders & Developers Corp. v. Manassas Iron & Steel Co., 208 F.Supp. 485, 489-490 (D.Md. 1962).
. See Royal School Laboratories Inc. v. Town of Watertown, 358 F.2d 813 (2d Cir. 1966); Girard Trust Co. v. Vance, 4 F.R.D. 255 (E.D.Pa.1945) ; of. Texas v. Florida, 306 U.S. 398, 405-412, 59 S. Ct. 563, 830, 83 L.Ed. 817 (1939).
. Circuit Judge, later Chief Justice, Taft in Lowry v. Cowles Elec. Smelting & Aluminum Co., 56 F. 488, 495 (C.C.N.D. Ohio 1893) ; see Sachs v. Montague Shoe Co., 132 F.Supp. 631 (E.D.N.Y.1955).
. Lear, Inc. v. Adkins, 395 U.S. 653, 670, 89 S.Ct. 1902, 23 L.Ed.2d 610 (1969); 35 U.S.C. § 282 (1964).
. Cf. IBIS Enterprises, Ltd. v. Spray-Bilt, Inc., 220 F.Supp. 65, 76 (S.D.Fla.1963), modified on other grounds, 350 F.2d 99 (5th Cir. 1965); Dooley Improvements, Inc. v. Central Hanover Bank & Trust Co., 28 F.Supp. 531, 534 (D.D.C.1939).
. Norton v. Jensen, 90 F. 415, 421 (9th Cir. 1898).
. Cf. Bierman v. Marcus, 246 F.2d 200 (3d Cir. 1957), cert. denied Milmar Estate, Inc. v. Marcus, 356 U.S. 933, 78 S.Ct. 774, 2 L.Ed.2d 762 (1958) ; New York Life Ins. Co. v. Lee, 232 F.2d 811, 813 (9th Cir. 1956). See also Texas v. Florida, 306 U.S. 398, 405-412, 59 S.Ct. 563 (1939) (risk must be “shown to be real and substantial”); Stuyvesant Ins. Co. v. Dean Constr. Co., 254 F.Supp. 102, 108 (S.D.N.Y.1966), aff’d per curiam, 382 F.2d 991 (2d Cir. 1967).
. 395 U.S. 653, 89 S.Ct. 1902 (1969).
. 35 U.S.C. § 291 (1964).
. Of., e. g., J. I. Case Co. v. Borak, 377 U.S. 426, 84 S.Ct. 1555, 12 L.Ed.2d 423 (1964).
. The predecessor to § 291, former § 66 of Title 35, ch. 712, 44 Stat. pt. 1, at 1170 (1926) (repealed 1952), did, by its terms, permit an interference proceeding to be brought by a nonowner. It provided:
“Whenever there are interfering patents, any person interested in any one of them, or in the working of the invention claimed under either of them, may have relief against the interfering patentee, and all parties interested under him, by suit in equity against the owners of the interfering patent. * * * ”
Although there is no indication in the legislative history of the 1952 revision of Title 35, see S.Rep. No. 1979, 82d Cong., 2d Sess. (1952), H.R.Rep. No. 1923, 82d Cong., 2d Sess. (1952), U.S.Code Cong. &
. SCM Corp. v. RCA, D.C., 276 F.Supp. 373 (S.D.N.Y.1967).
. Cf. Sachs v. Montague Shoe Co., 132 F.Supp. 631 (E.D.N.Y.1955); Lowry v. Cowles Elec. Smelting & Aluminum Co., 56 F. 488 (C.C.N.D.Ohio 1893).