Summary
In Phillips Petroleum Co. v. Shell Development Co., D.C., 64 F.Supp. 806, Id., D. C., 6 F.R.D. 406, as pages 407, 408, equally in point here the plaintiff brought suit for a declaratory judgment, alleging that the defendant had charged plaintiff with infringing its patents.
Summary of this case from F.E. Myers & Bros. Co. v. Goulds Pumps, Inc.Opinion
This is an action for declaratory judgment under 28 U.S.C.A. 400, and jurisdiction of the court is invoked under the patent statutes. Plaintiff seeks an injunction restraining defendant from asserting or charging that plaintiff's isomerization process infringes defendant's patents or that any patent owned by defendant validly covers plaintiff's isomerization process. Defendant upon affidavits moved that an order be entered requiring plaintiff to appear on a day certain to show cause why an order should not be made staying all proceedings in this action until 30 days after the termination of the period during which the United States of America is at war or during the period of the existing national emergency declared by the President to exist by his proclamation dated May 27, 1941, whichever period is longer. Defendant's motion rests on the premise that as a result of a certain recommendation of the War Production Board, plaintiff is precluded from maintaining this action at present time. On August 7, 1942 the Chairman of the War Production Board by Certificate No. 8 approved Recommendation No. 48, promulgated by the Petroleum Coordinator for War on July 24, 1942.
The second paragraph of Section 1504.62 relating to the exchange of technical information of Recommendation No. 48 provides:
Recommendation No. 48 was revoked by Ralph K. Davies, the Deputy Petroleum Administrator, on September 13, 1945, such revocation to be effective September 15, 1945. 10 F.R. 11758.
Since both parties here accepted the agreement, defendant contends plaintiff cannot maintain any action at the present time. Plaintiff contends that the revocation of the Recommendation No. 48 permits it to maintain the action.
Samuel E. Darby, Jr., of New York City, and William S. Potter, of Southerland, Berl & Potter, all of Wilmington, Del., for plaintiff.
James R. Morford and Thomas Cooch, of Marvel & Morford, all of Wilmington, Del., for defendant.
LEAHY, District Judge.
The acceptance by the parties of Recommendation No. 48 was, in substance, a covenant not to sue. Since this is properly a matter of defense, the present motion of defendant is procedurally unsound. Nevertheless, I conceive the purpose of the new Rules to be the quick and inexpensive settlement of disputes and, since the question raised by defendant's motion must ultimately be determined, I accordingly shall consider and dispose of the motion, without the aid of any other facts.
I think the motion to stay should be denied. The covenant not to sue was clearly made in specific reference to Recommendation No. 48. It was an implied in fact condition in the agreement that, with the revocation of the order, the prohibition not to sue was at an end. Cf. Canister Co. v. National Can Corp., D.C. Del., 63 F.Supp. 361. Moreover, I cannot believe the parties intended the prohibition to apply until the fortuitous circumstance of the declaration of the end of the national emergency by the President or Congress, when the specific 'emergency' which gave rise to the recommendation ceased.
The motion to stay is accordingly denied.
'Each party to any such exchange and any party receiving any information thereunder shall agree that it will not, during the period that the United States of America is at war or during the period of the existing National Emergency declared by the President to exist by his proclamation dated May 27, 1941, whichever period is the longer, with respect to any war plant receiving technical data or information involved in any such exchange, bring or cause to be brought any action or suit for infringement of patents against any other such party or against the licensees of any such party to any such exchange or against any party receiving any information hereunder pursuant to the approval of this Office, such agreement being without prejudice to the right of any party to bring or cause to be brought, after such period, any action or suit for infringement, if any, which may have been committed.'