and publicly advertising the fact to the trade. Then after postponing trial as long as possible, he could move for a dismissal without prejudice and repeat the process." 122 F.2d at pages 703, 704.
The defendant Company makes much of the argument that it was merely seeking information by means of the letter of November 22, 1943, and that it never actually threatened to commence legal proceedings against plaintiff. This argument is adequately answered by the case of Dewey & Almy Chemical Co. v. American Anode, 137 F.2d 68 (certiorari denied 320 U.S. 761, 64 S. Ct. 70), also decided in this circuit, in addition to those cited above, where the defendant asserted a scope for its patent claims publicly which embraced the methods practiced by the plaintiffs. The court remarked as follows:
"Certainly the fact that Anode had never made any direct threat to sue Dewey & Almy is not conclusive of the problem." 137 F.2d at page 70.
"* * * If Anode had published a printed notice or circular asserting that use of the described coagulant-dip processes constitutes an infringement of its patents this would undoubtedly mark the existence of an actual controversy between the patentee and all persons who engaged in practicing the process, whether they were known to the patentee or not." 137 F.2d at page 71.
Aside from the legal implications as to what constitutes an actual controversy, the aforementioned letter would reasonably lead plaintiff to believe that it would be sued if it failed to discontinue the manufacture, use and sale of its machines, as alleged in the complaint.
Since the argument of this motion plaintiff has moved for a temporary injunction restraining the defendant Company from the prosecution of the suit now pending in the United States District Court for the District of Maryland, filed on January 25, 1944, subsequent to the commencement of this action, and from prosecuring any other suit against it for the infringement of the Behrens patent.
The district court which first obtains jurisdiction of the parties and issues has the power, and is in fact in duty bond to enjoin the further prosecution of a cause involving the same parties and issues which began subsequently thereto in another United States District Court. The court first acquiring jurisdiction must be allowed to proceed without interference under such circumstances. Crosley Corporation v. Hazeltine Corporation, 3 Cir., 122 F.2d 925, certiorari denied 315 U.S. 813, 62 S. Ct. 798, 86 L. Ed. 1211; Triangle Conduit & Cable Co. v. National Elec. P. Corp., 3 Cir., 125 F.2d 1008, certiorari denied 316 U.S. 676, 62 S. Ct. 1046, 86 L. Ed. 1750. Indeed, in the case of Crosley Corporation v. Westinghouse Elec. & Mfg. Co., 3 Cir., 130 F.2d 474 (certiorari denied 317 U.S. 681, 63 S. Ct. 202, 87 L. Ed. 546), it was held that where one suit precedes the other by one day it was sufficient to attach jurisdiction to the court in which the prior cause was commenced. In that case, the court discussed the discretionary power of the district court under the Federal Declaratory Judgment Act, supra, as to jurisdiction, and its exercise according to fixed principles of law. The court said:
"* * * In patent cases, therefore, the district courts may decline jurisdiction of a suit brought in good faith to obtain declaratory relief only if it appears that the same parties and issues are involved in another suit previously begun or that in another suit subsequently begun involving the same parties and issues the questions in controversy between the parties can be better settled and relief sought by them more expeditiously and effectively afforded than in the declaratory proceeding." 130 F.2d at page 475.
An example of the exercise of this discretion appears in the case of Carbide & Carbon C. Corp. v. United States I. Chemicals, 4 Cir., 140 F.2d 47, in which the dismissal of a declaratory judgment was affirmed by the circuit court because of the pendency of a prior action in another district court. The subsequent action was held to be serving no useful purpose. The court held that a district judge's familiarity with the facts of a case due to prior litigation involving the same patent was not proof that the cause could be "more expeditiously and effectively" handled without showing that it would serve the convenience of witnesses, counsel or the parties or any other sufficient reason.
The defendant Company relies upon the case of Crosley Corporation v. Westinghouse Elec. & Mfg. Co., supra, and attempts to show that the facts in the instant case come within the language therein.
It asserts that the patent in the case at bar covers a large and expensive machine which cannot be brought into court and must be explained by witnesses having knowledge of its construction and details, and that the nearest machine sold by plaintiff, that it knows of, is in a plant in Kentucky. It points out that the plaintiff has its place of business in Baltimore and that plaintiff's counsel also has its office there. Baltimore is within the district in which defendant Company filed its complaint against plaintiff for infringing the Behrens patent subsequent to the filing of the bill of complaint herein.
It is the opinion of this court that the facts shown are not sufficient to warrant its refusing jurisdiction to the parties. The defendant Company is a resident of New Jersey and with equal weight plaintiff might argue that it is more convenient for it to try the cause in this district. Assuming that the purchaser of one of plaintiff's machines is in Kentucky, that fact alone cannot be deemed important for this court to refuse to take jurisdiction of this cause. The machine does not appear large enough to prevent its being moved and even if that were so the equities of the parties concerning the convenience of witnesses, counsel and themselves are equal. The plaintiff's choice of forum must prevail because of the priority of its action.
To summarize, orders should be taken as follows:
1. By the plaintiff: To amend the complaint by inserting the proffered allegations that the Langston Company is the true owner of the equitable title of the Langston patent.
2. To amend the complaint so as to set forth two separate causes of action in connection with (a) the Langston patent and (b) the Behrens patent.
3. To sever the cause of action brought in connection with the Langston patent from the one brought in connection with the Behrens patent.
4. To restrain, until the further order of this court, the Langston Company from prosecuting the suit instituted by it in the United States District Court for the District of Maryland against plaintiff Hooper Company based upon alleged infringement of the Langston Company patent No. 17, of which Behrens is the inventor, and from commencing any other action against plaintiff Hooper Company for the infringement of said patent.
5. By the defendant Samuel M. Langston: To dismiss as to Samuel M. Langston, individually, in connection with the Behrens patent cause of action.
Submit orders on motion day, at Trenton, Saturday, September 2, 1944, at 10 a.m.
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