The opinion of the court was delivered by: BYERS
This motion presents objections to 83 interrogatories attached to a bill of discovery in aid of an action at law to recover treble damages for the alleged infringement of five patents having to do with airplane equipment. The answer in the main suit raises issues of validity and infringement.
The interrogatories have been classified in the defendants' brief in five groups, and that classification seems to be proper and convenient.
Group I. Numbers 1, 6, 9, 12, 15, 18, 22, 26, 31, and 34.
The first is typical and asks if the defendants or any of them, "their predecessor, subsidiary or constituent corporations" (including four named but which are not defendants) since August 14, 1930, manufactured, used or sold in the United States, etc., and airplane designated by name and number.
The objection is twofold: (a) That no inquiry can be legally made with respect to corporations not parties to the suit; (b) that inquiry is improper respecting activities of the defendants not within the jurisdiction of the court.
As to the first, the objection obviously is sound. No argument is made to the contrary for plaintiff, and the matter seems too plain to require discussion.
The second branch of the objection is not so easy of disposition. The defendants Fairchild Aviation Corporation and Fairchild Aircraft Corporation are, respectively, Delaware and Maryland corporations. As to them, jurisdiction (Title 28 U.S.C. § 109, 28 U.S.C.A. § 109) rests upon their having regular and established places of business within this district, and the commission by each of an act of infringement, also within this district. See Edison v. Allis-Chalmers Co., C.C., 191 F. 837; Bowers v. Atlantic, G. & P. Co., C.C., 104 F. 887; Colgate & Co. v. Procter & Gamble Mfg. Co., D.C., 25 F.2d 160.
It has been held by Judge Thomas sitting in the District of Connecticut (Thompson et al. v. Westinghouse Electric & Manufacturing Co. et al., Equity No. 2573) that such an interrogatory, in a patent cause in equity, should be limited to infringement committed within the district.
The plaintiff seeks to avoid this ruling upon the theory that, since the main case is at law, he must prove his damages before the jury, and cannot do so unless afforded an opportunity to establish infringement wherever it may have occurred; that, if he were in equity, the proceedings before the master upon interlocutory decree would enable him to establish infringement exterior to this district, and by electing to proceed at law, he has not forfeited his right to the discovery necessary to enable him to establish a basis for computation of damages by a jury.
However plausible that argument may be, it is not deemed to be convincing. He must prevail as to validity or there will be no question of infringement for the jury, and it is not perceived why the defendants should now be called upon to aid the plaintiff by producing evidence which goes only to the question of possible damages.
As to the non-resident defendant corporations over which jurisdiction will fail unless an infringing act be shown, these interrogatories will be restricted to whatever has been done within the scope of the inquiry, within this district.
As to Fairchild Aviation Incorporated, a New York corporation, answers will be required from it ...