1. Venue in patent infringement suit is governed exclusively by
Jud.Code § 48, which provides that, in such suits, the District
Courts hall have jurisdiction in the district of which the
defendant is an inhabitant, or in any district in which the
defendant shall have committed acts of infringement and have a
regular and established place of business. P.
315 U. S.
563.
In a suit for patent infringement brought in one of two
districts in the same State, an individual who has no regular and
established place of business in that district and who is an
inhabitant of the other district cannot properly be joined as a
defendant.
2. The provision of Jud.Code § 52 permitting suits, not of a
local nature, against two or more defendants residing in different
judicial districts within the same State to be brought in either
district is inapplicable to patent infringement suit. P.
315 U. S.
566.
119 F.2d 883 reversed.
Certiorari, 314 U.S. 594, to review a decree which reversed the
action of the District Court in dismissing, as to one of two
defendants, a bill alleging infringement of a patent. 36 F. Supp.
29. The other defendant defaulted.
MR. JUSTICE MURPHY delivered the opinion of the Court.
The only question presented for our determination is whether
Section 48 of the Judicial Code, 28 U.S.C. § 109, is the sole
provision governing the venue of patent infringement litigation, or
whether that section is supplemented
Page 315 U. S. 562
by Section 52 of the Judicial Code, 28 U.S.C. § 113. Section 48
gives jurisdiction of suits for patent infringement to the United
States district courts in the district of which the defendant is an
inhabitant or in any district in which the defendant shall have
committed acts of infringement and have a regular and established
place of business. Section 52 permits suits, not of a local nature,
against two or more defendants residing in different judicial
districts within the same state to be brought in either district.
[
Footnote 1]
Petitioner, Stonite Products Company, an inhabitant of the
Eastern District of Pennsylvania without a regular
Page 315 U. S. 563
and established place of business in the Western District of
that State, was sued jointly with Lowe Supply Company, an
inhabitant of the Western District, in the Western District for
infringement of Patent No. 1,777,759 for a boiler stand. Petitioner
was served with process in the Eastern District, entered a special
appearance in the action in the Western District, and moved to
dismiss or quash the return of service because venue was laid in
the wrong district. The district court granted the motion and
dismissed the cause as to petitioner. [
Footnote 2] 36 F. Supp. 29. The Circuit Court of Appeals
reversed. 119 F.2d 883. We granted certiorari because of an
asserted conflict with
Motoshaver, Inc. v. Schick Dry Shaver,
Inc., 100 F.2d 236.
We hold that Section 48 is the exclusive provision controlling
venue in patent infringement proceedings.
Section 48 is derived from the Act of March 3, 1897, c. 395, 29
Stat. 695, and its scope can best be determined from an examination
of the reasons for its enactment.
Section 11 of the Judiciary Act of September 24, 1789, c. 20, 1
Stat. 79, permitted civil suits to be brought in the federal courts
against a person only in the district of which he was an inhabitant
or in which he was found at the time of serving the writ. That
section applied to suits for patent infringement.
Chaffee v.
Hayward, 20 How. 208,
61 U. S. 216;
Allen v. Blunt, 1 Blatchf. 480, Fed.Cas.No. 215. The Act
of March 3, 1875, c. 137, 18 Stat. 470, retained the provision
allowing suit wherever the defendant could be found. The abuses
engendered by this extensive venue prompted the Act of March 3,
1887, c. 373, 24 Stat. 552, which as amended by the Act of August
13, 1888, c. 866, 25 Stat. 433, permitted civil suits to be
instituted only in the district of which the defendant was an
inhabitant, except
Page 315 U. S. 564
that, in diversity jurisdiction cases, suit could be started in
the district of the plaintiff's or the defendant's residence. The
substance of those provisions was reenacted as Section 51 of the
Judicial Code (28 U.S.C. § 112).
After the holding of
In re Hohorst, 150 U.
S. 653, that the Act of 1887 as amended did not apply to
a suit against an alien or a foreign corporation "especially in a
suit for the infringement of a patent right," the lower federal
courts became uncertain as to the applicability of the Act of 1887
to patent infringement proceedings. [
Footnote 3] In explanation of
Hohorst's case, it
was said in
In Re Keasbey & Mattison Co., 160 U.
S. 221,
160 U. S. 230,
that
"It was a suit for infringement of a patent right, exclusive
jurisdiction of which had been granted to the circuit courts of the
United States . . . , and was therefore not affected by general
provisions regulating the jurisdiction of the courts of the United
States, concurrent with that of the several states."
Thereafter, the lower federal courts for the most part took the
position that the Act of 1887, as amended, did
Page 315 U. S. 565
not apply to suits for patent infringement, and that infringers
could be sued wherever they could be found. [
Footnote 4]
The Act of 1897 was adopted to define the exact jurisdiction of
the federal courts in actions to enforce patent rights, and thus
eliminate the uncertainty produced by the conflicting decisions on
the applicability of the Act of 1887 as amended to such litigation.
[
Footnote 5] That purpose
indicates
Page 315 U. S. 566
that Congress did not intend the Act of 1897 to dovetail with
the general provisions relating to the venue of civil suits, but
rather that it alone should control venue in patent infringement
proceedings.
Section 52 is derived from R.S. § 740, which in turn stems from
the Act of May 4, 1858, c. 27, 11 Stat. 272, a general act intended
to do away with the insertion of special provisions preserving
statewide venue in acts dividing a state into two or more judicial
districts, [
Footnote 6] and the
Act of February 24, 1863, c. 54, § 9, 12 Stat. 662. Respondents
insist that Section 52 applies to patent infringement suits because
it antedates Section 48, excludes from its purview only suits of a
local nature, and is consistent with and complementary to Section
48, since it deals with the problem of venue in the geographical
sense, rather than in terms of specified classes of litigation. We
cannot agree.
Even assuming that R.S. § 740 covered patent litigation prior to
the Act of 1897, we do not think that its application survived that
Act, which was intended to define the exact limits of venue in
patent infringement suits. [
Footnote 7] Furthermore, the Act of 1897 was a restrictive
measure, limiting a prior, broader venue.
General
Elec. Co. v.
Page 315 U. S. 567
Marvel Co., 287 U. S. 430,
287 U. S.
434-435;
Bowers v. Atlantic, G. & P. Co.,
104 F. 887;
Cheatham Electric Switching Device Co. v. Transit
Development Co., 191 F. 727. [
Footnote 8] Thus, there is little reason to assume that
Congress intended to authorize suits in districts other than those
mentioned in that Act.
The reenactment of the Act of 1897 as Section 48, and of R.S. §
740 as Section 52 of the Judicial Code by the Act of March 3, 1911,
c. 231, 36 Stat. 1100, 1101, is not indicative of any Congressional
understanding that the two sections are complementary. Quite the
contrary, for Section 52 appears in the Judicial Code as an
exception to Section 51, the general venue provision derived from
the Act of 1887, as amended.
See Camp v. Gress,
250 U. S. 308,
250 U. S. 315.
Section 51 is, of course, not applicable to patent infringement
proceedings.
General Elec. Co. v. Marvel Co., supra.
[
Footnote 9] Since Section 48
is wholly independent of Section 51, there is an element of
incongruity in attempting to supplement Section 48 by resort to
Section 52, an exception to the provisions of Section 51.
Cf.
Connecticut Fire Ins. Co. v. Lake Transfer Corp., 74 F.2d
258.
Reversed.
[
Footnote 1]
Section 48 provides:
"In suits brought for the infringement of letters patent, the
district courts of the United States shall have jurisdiction, in
law or in equity, in the district of which the defendant is an
inhabitant, or in any district in which the defendant, whether a
person, partnership, or corporation, shall have committed acts of
infringement and have a regular and established place of business.
If such suit is brought in a district of which the defendant is not
an inhabitant, but in which such defendant has a regular and
established place of business, service of process, summons, or
subpoena upon the defendant may be made by service upon the agent
or agents engaged in conducting such business in the district in
which suit is brought."
Section 52 provides:
"When a State contains more than one district, every suit not of
a local nature, in the district court thereof, against a single
defendant, inhabitant of such State, must be brought in the
district where he resides; but if there are two or more defendants,
residing in different districts of the State, it may be brought in
either district, and a duplicate writ may be issued against the
defendants, directed to the marshal of any other district in which
any defendant resides. The clerk issuing the duplicate writ shall
indorse thereon that it is a true copy of a writ sued out of the
court of the proper district, and such original and duplicate
writs, when executed and returned into the office from which they
issue, shall constitute and be proceeded on as one suit, and upon
any judgment or decree rendered therein, execution may be issued,
directed to the marshal of any district in the same State."
[
Footnote 2]
Lowe Supply Company defaulted and the suit proceeded to judgment
against it.
[
Footnote 3]
Prior to the
Hohorst case, the lower federal courts
seem to have been unanimous in assuming that the Act of 1887, as
amended, governed patent infringement litigation.
See
Reinstadler v. Reeves, 33 F. 308;
Miller-Magee Co. v.
Carpenter, 34 F. 433;
Halstead v. Manning, Bowman &
Co., 34 F. 565;
Gormully & Jeffrey Mfg. Co. v. Pope
Mfg. Co., 34 F. 818;
Preston v. Fire-Extinguisher Mfg.
Co., 36 F. 721;
Adriance, Platt & Co. v. McCormick
Harvesting Mach. Co., 55 F. 287;
National Typewriter Co.
v. Pope Mfg. Co., 56 F. 849;
Bicycle Stepladder Co. v.
Gordon, 57 F. 529;
Cramer v. Singer Mfg. Co., 59 F.
74.
After the
Hohorst decision, conflict developed.
Union Switch & Signal Co. v. Hall Signal Co., 65 F.
625, relying on
Galveston, H. & S.A. Ry. Co. v.
Gonzales, 151 U. S. 496,
interpreted
In re Hohorst as limited to infringement suits
against aliens or foreign corporations.
Accord, Donnelly v.
United States Cordage Co., 66 F. 613.
Contra, Smith v.
Sargent Mfg. Co., 67 F. 801.
[
Footnote 4]
National Button Works v. Wade, 72 F. 298;
Noonan v.
Chester Park Athletic Club Co., 75 F. 334;
Earl v.
Southern Pacific Co., 75 F. 609;
Westinghouse Air-Brake
Co. v. Great Northern Ry. Co., 88 F. 258.
Contra, Gorham
Mfg. Co. v. Watson, 74 F. 418.
[
Footnote 5]
See H. Rpt. No. 2905, 54th Cong., 2d Sess.
The remarks of Mr. Mitchell, who reported the bill for the House
Committee on Patents, are significant (29 Cong.Rec.1900-1901):
"Mr. Speaker, the necessity for this law grows out of the acts
of 1887 and 1888 which amended the judiciary act. Conflicting
decisions have been arisen in the different districts in the same
States as to the construction of these acts of 1887 and 1888, and
there is great uncertainty throughout the country as to whether or
not the act of 1887, as amended by the act of 1888, applied to
patent cases at all."
"The bill is intended to remove this uncertainty, and to define
the exact jurisdiction of the circuit courts in these matters."
"The committee have been extremely careful in the investigation
of the matter before reporting the bill."
"As the bill was referred to me, I wrote to a great many patent
lawyers in different parts of the country in order to get their
views and objections, if any, and I find that they are all
unanimously in favor of the bill as it is now reported, and state
that it would tend not only to define the jurisdiction of the
circuit courts not now defined, but also limit that jurisdiction,
and so clearly define it that, in the future, there will be no
question with regard to the application of the acts of 1887 and
1888."
"
* * * *"
". . . The trouble has arisen in this matter that, under the act
of 1888, some of the courts were uncertain whether or not the law
did or did not apply to patent cases, and therefore this special
bill relating to patents solely has been brought up because of the
indefiniteness and uncertainty arising from different constructions
of the act of 1888 as applied to patent cases."
[
Footnote 6]
See the remarks of Senator Pugh, who reported the bill
for the Senate Judiciary Committee. 36 Cong.Globe 936, 35th Cong.,
1st Sess.
[
Footnote 7]
As a matter of fact, there was some uncertainty as to whether
R.S. § 740 survived the general venue provisions of the Acts of
1875 and 1887.
See Greeley v. Lowe, 155 U. S.
58,
155 U. S. 72;
Petri v. F. E. Creelman Lumber Co., 199 U.
S. 487,
199 U. S. 497;
Camp v. Gress, 250 U. S. 308,
250 U. S. 315.
It was held that it did in
East Tennessee v. & G. R. Co. v.
Atlanta & F. R. Co., 49 F. 608, 15 L.R.A. 109; Goddard v.
Mailler, 80 F. 422, and
Doscher v. United States Pipe Line
Co., 185 F. 959.
But compare New Jersey Steel & Iron
Co. v. Chormann, 105 F. 532,
and Seybert v. Shamokin &
Mt. C. Electric Ry. Co., 110 F. 810.
[
Footnote 8]
Zell v. Erie Bronze Co., 273 F. 833, is to the contrary
but apparently overlooks the trend of the lower federal courts
after
In re Keasbey & Mattinson, 160 U.
S. 221, was decided.
See note 4 ante.
[
Footnote 9]
This is apparent from the legislative history of the Act of 1897
from which Section 48 is derived.
See note 5 ante.
Section 51 is likewise inapplicable to suits for copyright
infringement.
Lumiere v. Mae Edna Wilder, Inc.,
261 U. S. 174.