The opinion of the court was delivered by: KIRKPATRICK
Sur Defendant's Motion to Dismiss.
As to twelve of the sixteen patents, the defendant asserts that no controversy exists and moves to dismiss as to them. The defendant wrote letters to both the plaintiff and its distributor. In his letter to the plaintiff he said: "We have obtained a copy of your Catalog and note that you have not hesitated to boldly feature our patented product, and particularly wish to refer you to the following patents which we own:" listing all sixteen patents. In the letter to the distributor he said: "We have obtained a copy of your Catalog and note that you have not hesitated to boldly feature our patent product in practically the entire catalog, and therefore we wish to inform you that unless you ceases supplying this material to the trade we will bring suit against you for damages. * * * For your records we are giving you below a list of our Patents: (listing all sixteen patents) * * * you will be liable for any infringement on the above patents, * * *" There were other letters, and notices printed in trade periodicals warning users and manufacturers against infringement, particularly adverting to prosecution, injunction, and loss of profits. I do not agree that the subsequent correspondence between the plaintiff and the defendant resulted in boiling down, defining and limiting the controversy to the four patents as to which its existence is conceded. In addition the relations of the parties with regard to the patent issue must be taken in the light of the defendant's refusal to admit or concede the plaintiff's assertion made in the complaint and at the argument that it is not infringing any of the twelve patents as to which the defendant claims no controversy exists.
It is true that in the recent decision of the Circuit Court of Appeals in Treemond Co. v. Schering Corporation, 3 Cir., 122 F.2d 702, the issue was more clean cut, inasmuch as that case involved a specific patent and a specific product. I think, however, that the principles and the policy announced in the opinion in that case are quite broad enough to support a suit for declaratory judgment in a case like the present.
The defendant's motion to dismiss as to the twelve patents is denied.
Sur Motion to Dismiss Cause of Action for Unfair Competition.
Denied, on the authority of Hurn v. Oursler, 289 U.S. 238, 53 S. Ct. 586, 77 L. Ed. 1148.
Sur Motion to Dismiss as to Patents 1,783,807 and 1,994,226 Admitted to be in Controversy.
I am of the opinion that the judgment in the suit in Alabama is not res judicata as to the present litigation.
Sur Plaintiff's Motion for Leave to Amend Bill of Complaint.
The amendment is allowed.
Sur Plaintiff's Motion for Partial Summary Judgment or, in the Alternative, Partial Decree Pro Confesso and to ...