The opinion of the court was delivered by: Kirkpatrick, Chief Judge.
In this action the plaintiff asks for a declaratory judgment,
limited to a finding that the stocking which it manufactures does
not infringe the Bley patent, owned by the defendant. The
defendant has moved to dismiss on the ground that there is no
actual or justiciable controversy.
Although there have been no threats of suit against the
plaintiff or its customers and no direct communication between
the parties, it is perfectly clear — in fact, it was so stated by
the defendant's counsel at the argument of this motion — that the
defendant considers that the stocking made and sold by the
plaintiff infringes the defendant's patent, and it is the fact
that the defendant has consistently maintained that position,
publicly, in court and out of court.
The defendant argues that the plaintiff has not alleged or
shown any facts from which may be inferred some likelihood that
the defendant will threaten suit or charge the plaintiff with
infringement. I think that the contrary is true. In fact, it
almost looks as though the defendant were, by a series of oblique
approaches, putting itself in readiness to move against the
(1) During the pendency of an action brought by this plaintiff
against an infringer of its (the plaintiff's) patent, in which
the accused stocking was identical with that which is the subject
of this application for a declaratory judgment, this defendant
licensed the infringer in the suit in question, under the Bley
patent, to make a stocking designated as "Style B" which was the
same as the stocking which was the subject of the infringement
suit and of this action. The license provided among other things
that no mills, with the exception of three specified in the
license, would be authorized or licensed to sell the stockings
(2) In an infringement suit brought by it and now in progress
in the District Court in North Carolina, this defendant,
ostensibly for the purpose of proving commercial success by
showing widespread copying, introduced into evidence a photograph
of a stocking identical with the plaintiff's stocking along with
a large number of others and made the unqualified statement to
the Court that the defendant claimed that "all the pictures in
that album (an album containing the aforesaid photograph)
infringed the Bley patent".
(3) In a recent case tried before Judge Forman in which this
defendant was suing another alleged infringer, this defendant
obtained an affirmance (with some alteration by the Court) of its
request to the effect that the stocking as to which this
plaintiff had obtained a consent judgment of infringement of its
patent, embodied "the dominant motif of the Bley design".
It will be noted that the defendant, by procedures which
allowed the plaintiff no opportunity to present any evidence to
the courts or any arguments to defend itself against the charge
of infringement, has obtained an expression of opinion from one
Court to the effect that there is at least a strong similarity
between the design of the Bley patent and the design of the
plaintiff's stocking and is presenting the same contention to
It seems to me that the Declaratory Judgments Act, 28 U.S.C. § 2201,
2202, was intended to meet exactly this sort of thing. The
Court of Appeals for the Third Circuit in Dewey & Almy Chemical
Company v. American Anode, Inc., 137 F.2d 68, held that the Act
should have a liberal interpretation,
and that, in a patent case, it is not necessary to show any
direct threats of suit or charges of infringement against the
plaintiff. In the present case, short of showing actual threats
and charges, the plaintiff has made out about as clear a case for
relief as could be imagined.
The motion to dismiss is denied.
© 1992-2003 VersusLaw ...