UNITED STATES COURT OF APPEALS FOR THE THIRD CIRCUIT
September 10, 1942
WESTINGHOUSE ELECTRIC & MANUFACTURING CO.
Before BIGGS, MARIS, JONES, and GOODRICH, Circuit Judges. On Petition for Rehearing.
MARIS, Circuit Judge.
Westinghouse has petitioned for rehearing for reasons which, with but one exception, were advanced by it upon the original argument and considered by us at that time. The one reason assigned which has novelty is based upon the assumption that a declaratory judgment suit may be brought against a patent owner wherever he may be found for purposes of service and that such an unrestricted choice of venue made available to an alleged infringer may lead to abuses as serious as those which the Declaratory Judgment Act, 28 U.S.C.A.§ 400, has eliminated. Apparently the petitioner considers this an argument against the allowance of declaratory judgment suits and in favor of infringement suits. The declaratory judgment suit procedure as applied to patent litigation is now too well established to permit of such attack as this, however. Furthermore, the petitioner's argument fails because the premise upon which it is based, namely, that a declaratory judgment suit may be brought against a patent owner wherever he may be found, is wholly incorrect.
The venue of a patent infringement suit is governed exclusively by Section 48 of the Judicial Code, 28 U.S.C.A. § 109; Stonite Products Co. v. Melvin Lloyd Co., 1942, 315 U.S. 561, 62 S. Ct. 780, 86 L. Ed. 1026. Under this section such a suit may be brought in any district in which the defendant, whether an individual or a corporation, "shall have committed acts of infringement and have a regular and established place of business." A patent declaratory judgment suit on the other hand is governed by the provisions of Section 51 of the Judicial Code, 28 U.S.C.A. § 112, under which the suit may be brought only in the district of which the defendant is an inhabitant.It is true that the Supreme Court has held in Neirbo Co. v. Bethlehem Shipbuilding Corporation, 308 U.S. 165, 60 S. Ct. 153, 84 L. Ed. 167, 128 A.L.R. 1437, that the designation by a foreign corporation of an agent for the service of process in a particular state amounts to a consent to be sued in the federal district court in that state. This, however, would only enlarge the venue of suits against a corporate patent owner and then only to states in which it had appointed a local agent for service of process.
The fact that declaratory judgment suits can only be brought in the home district of a patent owner or, in the case of a corporate owner, in those foreign states only in which it has made arrangements to be served with process, clearly negatives the petitioner's assertion that the venue of such suits is very much wider than that permitted to patent infringement suits by Section 48 under which, as we have seen, the latter suits may be brought not only in the district of which the defendant is an inhabitant but also in any other district in which the defendant has committed acts of infringement and has a regular place of business.
The petition for rehearing is denied.
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