The opinion of the court was delivered by: FORMAN
Plaintiff, a corporation of the State of Maryland, is a manufacturer of machines for making corrugated paper box blanks. Defendant Samuel M. Langston Company, hereinafter referred to as Company, a corporation of the State of New Jersey engaged in the same business as the plaintiff, is the owner of Letters Patent No. 2,262,913 (referred to as the Behrens patent), relating to a cut-off drive mechanism for use in cutting box blanks from a moving web of corrugated paper, which patent was issued to it on November 18, 1941, as assignee of Herbert C. Behrens, the inventor. Defendant Samuel M. Langston of Wenonah, New Jersey, is the inventor of a sheet scoring and slotting mechanism used for slotting and scoring paper box blanks, a patent for which was issued to him on July 1, 1930, numbered Letters Patent No. 1,769,883, referred to as the Langston patent.
This suit is brought under the Federal Declaratory Judgment Act, 28 U.S.C.A. § 400, to seek a judgment declaring invalid Letters Patent Nos. 1,769,883, the Langston patent, and 2,262,913, the Behrens patent, as to all the claims thereof, or if valid, that the said patents are not infringed by plaintiff and for an injunction against the defendants preventing them from further threatening and bringing suit for infringement against plaintiff or its customers and from any interference with plaintiff's manufacture, use and sale of its machines.
Plaintiff alleges that it presently manufactures machines for slotting and scoring paper box blanks similar to that disclosed in Letters Patent No. 1,567,656 issued to defendant Samuel M. Langston on December 29, 1925, which has expired, and that the machines it manufactures for use in cutting paper box blanks is covered by Letters Patent No. 2,052,461 issued to it on August 25, 1936, upon the application of Henry B. Greenwood. It admits that since the grant of the Behrens patent on November 18, 1941, it has altered the design of its machine, but that the change was not in the operation of the machine and does not infringe upon the said Behrens patent. It is stated in the complaint that the machines manufactured by plaintiff would infringe both the Langston and the Behrens patents if the scope asserted for the claims of these patents by the defendants was valid; that "defendants have led plaintiff to believe that they will sue plaintiff if it does not discontinue the manufacture, use, and sale of" its machines; that defendants have failed to bring suit against it for infringement. The invalidity of the Langston and Behrens patents is claimed upon several grounds and if the patents are held to be valid, the scope claimed for them by the defendants is charged to be broader than the intention.
It is further alleged in the complaint that defendant Samuel M. Langston is the president of the defendant Company and that plaintiff "believes" that legal title to the Langston patent is held by the former but that the rights and privileges of ownership are exercised by the latter, "the exact nature of whose interest in said Langston patent is at present unknown to plaintiff"; that "plaintiff therefore reserves the right to amend the statement in this complaint regarding the title to said patents to accord with the facts as they may later appear."
A motion to dismiss the complaint as to defendant Company is before the court upon the grounds that (a) under Rule 20(a) of the Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c, it is improperly joined in the action against defendant Samuel M. Langston and (b) that there is no actual controversy to support the action.
Defendant Company, denying that defendant Samuel M. Langston is its president, contends, under its first ground, that there are two independent patents involved here which are separately owned, one by each defendant, and no question of law or fact exists which is common to both defendants or to both patents, for the reasons that defendant Company has a non-exclusive shop right to the Langston patent and does not exercise the rights and privileges of ownership, and that no machine alleged to infringe one patent is alleged to infringe the other patent.
Plaintiff has since applied to the court for permission to amend the complaint by inserting as one of the amendments the following allegation:
"The Samuel M. Langston Company is the true owner of the equitable title to said patents, the alleged inventions of said patents having been developed in the Langston Company's plant, at its expense and by its engineers, on the company's time, the expense of obtaining the patents having been paid by the company; the application for said patents in the absence of an assignment to the company was a violation of the company's rights in said inventions and the entire right, title and interest in and to said patents in effect is the property of said company and the legal, as well as the equitable, title could be obtained at any time giving the Langston company the complete right, title and interest in and to said patents, on demand or by the proper proceeding instituted on behalf of said company."
Moreover, the plaintiff argues that there can be no dismissal for misjoinder of parties under Rules 20 and 21 of the Federal Rules of Civil Procedure, supra, but that these rules provide for the separation of causes improperly joined.
The Federal Rules of Civil Procedure, supra, provide as follows:
"(a) Permissive Joinder. All persons may join in one action as plaintiffs if they assert any right to relief jointly, severally, or in the alternative in respect of or arising out of the same transaction, occurrence, or series of transactions or occurrences and if any question of law or fact common to all of them will arise in the action. All persons may be joined in one action as defendants if there is asserted against them jointly, severally, or in the alternative, any right to relief in respect of or arising out of the same transaction, occurrence, or series of transactions or occurrences and if any question of law or fact common to all of them will arise in the action. A plaintiff or defendant need not be interested in obtaining or defending against all the relief demanded. Judgment may be given for one or more of the plaintiffs according to their respective rights to relief, and against one or more defendants according to their respective liabilities.
"(b) Separate Trials. The court may make such orders as will prevent a party from being embarrassed, delayed, or put to expense by the inclusion of a party against whom he asserts no claim and who asserts no claim against him, and may order separate trials or make other orders to prevent delay or prejudice." 28 U.S.C.A. following section 723c, Rule 20.
"Misjoinder of parties is not ground for dismissal of an action. Parties may be dropped or added by order of the court on motion of any party or of its own initiative at any stage of the action and on such terms as are just. Any claim against a party may be severed and proceeded with separately." 28 U.S.C.A. following section 723c, Rule 21.
The rules for permissive joinder are set forth in Rule 20(a), supra. The court has the power to order separate trials or make any other orders it sees fit where a party is joined unnecessarily. Rule 20(b), supra. Misjoinder of parties does not give ground for dismissal of an action, but such parties may be dropped at any stage of the proceedings. Similarly, a claim against a party may be severed, Rule 21, supra. These same rules apply to suits for a declaratory judgment, Rule 57, supra.