1. Venue in patent infringement actions is governed exclusively
by 28 U.S.C. § 1400(b), which provides that any such action may be
brought
"in the judicial district where the defendant resides, or where
the defendant has committed acts of infringement and has a regular
and established place of business;"
and 28 U.S.C. § 1391(c) has no application to such actions.
Stonite Products Co. v. Melvin Lloyd Co., 315 U.
S. 561. Pp.
353 U. S.
222-229.
2. A patent infringement action may not be brought against a
corporation in a judicial district in which it is not shown to have
committed any of the alleged acts of infringement and which is
outside the State where it was incorporated, though it has a
regularly established place of business in such judicial district.
Pp.
353 U. S.
222-229.
3. The 1948 revision and recodification of the Judicial Code, 62
Stat. 869, made no substantive change in § 48 of the Judicial Code
when it recodified it as 28 U.S.C. § 1400(b). Pp.
353 U. S.
225-228.
233 F.2d 885 reversed and remanded.
MR. JUSTICE WHITTAKER delivered the opinion of the Court.
The question presented is whether 28 U.S.C. § 1400(b) is the
sole and exclusive provision governing venue in patent infringement
actions, or whether that section is supplemented by 28 U.S.C. §
1391(c).
Page 353 U. S. 223
Section 1400 is titled "Patents and copyrights," and subsection
(b) reads:
"(b) Any civil action for patent infringement may be brought in
the judicial district where the defendant resides, or where the
defendant has committed acts of infringement and has a regular and
established place of business."
Section 1391 is titled "Venue generally," and subsection (c)
reads:
"(c) A corporation may be sued in any judicial district in which
it is incorporated or licensed to do business or is doing business,
and such judicial district shall be regarded as the residence of
such corporation for venue purposes."
Petitioner, Fourco Glass Company, a West Virginia corporation,
was sued for patent infringement in the Southern District of New
York. It moved to dismiss for lack of venue [
Footnote 1] because, although it had a regularly
established place of business in the district of suit, there was no
showing that it had committed any of the alleged acts of
infringement there. The District Court held that there had been no
showing of any acts of infringement in the district of suit, and
that venue in patent infringement actions is solely and exclusively
governed by § 1400(b), as a special and specific venue statute
applicable to that species of litigation. It accordingly granted
the motion and dismissed the action. 133 F. Supp. 531. The Court of
Appeals, without passing on the District Court's ruling that there
had been no showing of acts of infringement in the district of
suit, reversed, 233 F.2d 885, 886, holding that proper construction
"requires . . . the insertion in" § 1400(b) "of the definition of
corporate
Page 353 U. S. 224
residence from" § 1391(c), and that the two sections, when thus
"read together," mean "that this defendant may be sued in New York,
where it
is doing business.'" We granted certiorari [Footnote 2] because of an asserted
conflict with this Court's decision in Stonite Products Co. v.
Melvin Lloyd Co., 315 U. S. 561, and
to resolve a conflict among the circuits [Footnote 3] upon the question of venue in patent
infringement litigation.
We start our considerations with the
Stonite case. The
question there -- not legally distinguishable from the question
here -- was whether the venue statute applying specifically to
patent infringement litigation (then § 48 of the Judicial Code, 28
U.S.C. (1940 ed.) § 109) was the sole provision governing venue in
those cases, or whether that section was to be supplemented by what
was then § 52 of the Judicial Code, 28 U.S.C. (1940 ed.) § 113,
which authorized -- just as its recodified counterpart, 28 U.S.C. §
1392(a), does now -- an action, 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. That
supplementation, if permissible, would have fixed venue over
Stonite Products Company (an inhabitant of the Eastern District of
Pennsylvania) in the District Court for the Western District of
Pennsylvania,
Page 353 U. S. 225
where the suit was brought, because its codefendant was an
inhabitant of that district.
After reviewing the history of, and the reasons and purposes
for, the adoption by Congress of the venue statute applying
specifically to patent infringement suits -- ground wholly
unnecessary to replow here -- this Court held "that Section 48 is
the exclusive provision controlling venue in patent infringement
proceedings," and
"that Congress did not intend the Act of 1897 (which had become
§ 48 of the Judicial Code, 28 U.S.C. (1940 ed.) § 109) 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. [
Footnote
4]"
The soundness of the
Stonite case is not here assailed,
and, unless there has been a substantial change in what was § 48 of
the Judicial Code at the time the
Stonite case was
decided, on March 9, 1942, it is evident that that statute would
still constitute "the exclusive provision controlling venue in
patent infringement proceedings."
The question here, then, is simply whether there has been a
substantive change in that statute since the
Stonite case.
If there has been such change, it occurred in the 1948 revision and
recodification of the Judicial Code. [
Footnote 5] At the time of the
Stonite case, the
venue provisions of that statute (§ 48 of the 1911 Judicial Code,
28 U.S.C. (1940 ed.) § 109) read:
"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.
"
Page 353 U. S. 226
The reports of the Committee on the Judiciary of the Senate
[
Footnote 6] and of the House
[
Footnote 7] respecting the
1948 revision and recodification of the Judicial Code make plain
that every change made in the text is explained in detail in the
Revisers' Notes. As shown by their notes on § 1400(b), the Revisers
placed the venue provisions (quoted above) of old § 48 (28 U.S.C.
(1940 ed.) § 109), with word changes and omissions later noted, in
§ 1400(b), and placed the remainder, or process provisions, with
certain word changes, in § 1694 of the 1948 Code. The Revisers'
Notes on § 1400(b) point out that "Subsection (b) is based on
section 109 of Title 28 U.S.C., 1940 ed., with the following
changes:" (1) "Words
civil action' were substituted for 'suit,'
and words `in law or in equity,' after `shall have jurisdiction'
were deleted, in view of Rule 2 of the Federal Rules of Civil
Procedure"; (2) "Words in subsection (b) `where the defendant
resides' were substituted for `of which the defendant is an
inhabitant'" because the "Words `inhabitant' and `resident,' as
respects venue, are synonymous" (we pause here to observe that this
treatment, and the expressed reason for it, seems to negative any
intention to make corporations suable, in patent infringement
cases, where they are merely "doing business," because those
synonymous words mean domicile, and, in respect of corporations,
mean the state of incorporation only. See Shaw v. Quincy Mining
Co., 145 U. S. 444);
and (3) "Words `whether a person, partnership, or corporation'
before `has committed' were omitted as surplusage."
Page 353 U. S. 227
Statements made by several of the persons having importantly to
do with the 1948 revision are uniformly clear that no charges of
law or policy are to be presumed from changes of language in the
revision unless an intent to make such changes is clearly
expressed. [
Footnote 8]
"The change of arrangement, which placed portions of what was
originally a single section in two separated sections cannot be
regarded as altering the scope and purpose of the enactment. For it
will not be inferred that Congress, in revising and consolidating
the laws, intended to change their effect, unless such intention is
clearly expressed.
United States v. Ryder, 110 U. S.
729,
110 U. S. 740;
United
States v. Le Bris, 121 U. S. 278,
121 U. S.
280;
Logan v. United States, 144 U. S.
263,
144 U. S. 302;
United
States v. Mason, 218 U. S. 517,
218 U. S.
525."
Anderson v. Pacific Coast S.S. Co., 225 U.
S. 187,
225 U. S.
198-199.
In the light of the fact that the Revisers' Notes do not express
any substantive change, and of the fact that several of those
having importantly to do with the revision
Page 353 U. S. 228
say no change is to be presumed unless clearly expressed, and no
substantive change being otherwise apparent, we hold that 28 U.S.C.
§ 1400(b) made no substantive change from 28 U.S.C. (1940 ed.) §
109 as it stood and was dealt with in the
Stonite
case.
The main thrust of respondents' argument is that § 1391(c) is
clear and unambiguous, and that its terms include all actions --
including patent infringement actions -- against corporations, and
therefore that the statute should be read with, and as
supplementing, § 1400(b) in patent infringement actions. That
argument is not persuasive, as it merely points up the question,
and does nothing to answer it. For it will be seen that § 1400(b)
is equally clear, and also that it deals specially and specifically
with venue in patent infringement actions. Moreover, it will be
remembered that old § 52 of the Judicial Code, 28 U.S.C. (1940 ed.)
§ 113, was likewise clear and generally embracive, yet the
Stonite case held that it did not supplement the specific
patent infringement venue section (then § 48 of the Judicial Code,
28 U.S.C. (1940 ed.) § 109). The question is not whether § 1391(c)
is clear and general, but, rather, it is, pointedly, whether §
1391(c) supplements § 1400(b), or, in other words, whether the
latter is complete, independent, and alone controlling in its
sphere, as was held in
Stonite, or is in some measure
dependent for its force upon the former.
We think it is clear that § 1391(c) is a general corporation
venue statute, whereas § 1400(b) is a special venue statute
applicable specifically to all defendants in a particular type of
actions,
i.e., patent infringement actions. In these
circumstances, the law is settled that
"However inclusive may be the general language of a statute, it
'will not be held to apply to a matter specifically dealt with in
another part of the same enactment. . . . Specific terms prevail
over the general in the same or another statute
Page 353 U. S. 229
which otherwise might be controlling.'
Ginsberg & Sons
v. Popkin, 285 U. S. 204,
285 U. S.
208"
Clifford F. MacEvoy Co. v. United States, 322 U.
S. 102,
322 U. S.
107.
We hold that 28 U.S.C. § 1400(b) is the sole and exclusive
provision controlling venue in patent infringement actions, and
that it is not to be supplemented by the provisions of 28 U.S.C. §
1391(c). The judgment of the Court of Appeals must therefore be
reversed, and the cause remanded for that court to pass upon the
District Court's ruling that there had been no showing of acts of
infringement in the district of suit.
Reversed and remanded.
MR. JUSTICE HARLAN, believing that the Revisers' Notes have been
given undue weight,
Ex parte Collett, 337 U. S.
55,
337 U. S. 61-71,
and that they are, in any event, unclear, dissents for the reasons
given by the Court of Appeals, 233 F.2d 885.
See also Dalton v.
Shakespeare Co., 196 F.2d 469; Lindley, C.J., dissenting in
C-O-Two Fire Equipment Co. v. Barnes, 194 F.2d 410, 415;
Denis v. Perfect Parts, Inc., 142 F.
Supp. 259; Moore, Commentary on the U.S. Judicial Code 184-185,
193-194.
[
Footnote 1]
Under Rule 12(b)(3) of Federal Rules of Civil Procedure.
[
Footnote 2]
352 U.S. 820.
[
Footnote 3]
The Third Circuit, in
Ackerman v. Hook, 183 F.2d 11,
the Seventh Circuit, in
C-O-Two Fire Equipment Co. v.
Barnes, 194 F.2d 410, and the Tenth Circuit, in
Ruth v.
Eagle-Picher Company, 225 F.2d 572, as well as numerous
District Courts, have held that 28 U.S.C. § 1400(b) alone controls
venue in patent infringement cases, while, on the other hand, the
Fifth Circuit, in
Dalton v. Shakespeare Co., 196 F.2d 469,
and in
Guiberson Corp. v. Garrett Oil Tools, Inc., 205
F.2d 660, and several District Courts, have held that the
provisions of 28 U.S.C. § 1391(c) are to be read into, and as
supplementing, § 1400(b), as the Second Circuit held in this case,
and that, hence, a corporation may be sued for patent infringement
in any district where it merely "is doing business."
[
Footnote 4]
315 U.S. at
315 U. S. 563,
315 U. S.
566.
[
Footnote 5]
62 Stat. 869.
[
Footnote 6]
S.Rep. No. 1559, 80th Cong., 2d Sess., p. 2, which contains the
statement
"Appended to the report are the revisers' notes to each section,
together with accompanying tables. These explain in great detail
the source of the law and the changes made in the course of the
codification and revision."
[
Footnote 7]
H.R.Rep. No. 308, 80th Cong., 1st Sess., p. 7, which contains
the statement "The reviser's notes are keyed to sections of the
revision and explain in detail every change made in text."
[
Footnote 8]
Mr. William W. Barron, the Chief Reviser of the Code, in his
article on "The Judicial Code 1948 Revision," 8 F.R.D. 439, pointed
out at 445-446, that
". . . no changes of law or policy will be presumed from changes
of language in revision unless an intent to make such changes is
clearly expressed. Mere changes of phraseology indicate no intent
to work a change of meaning, but merely an effort to state in clear
and simpler terms the original meaning of the statute revised."
Professor James William Moore of Yale University, a special
consultant on this revision, stated that: "Venue provisions have
not been altered by the revision." Hearings before Subcommittee No.
1 of the House Judiciary Committee on H.R. 1600 and H.R. 2055, 80th
Cong., 2d Sess., p. 1969.
Judge Albert B. Maris of the Third Circuit, a member of a
committee of the Judicial Conference of the United States to
collaborate with the congressional committees in carrying forward
the work of this revision, stated that: "[C]are has been taken to
make no changes in the existing laws which would not meet with
substantially unanimous approval."
Id., p. 1959.