Opinion
November 2, 1955.
Pennie, Edmonds, Morton, Barrows Taylor, New York City, for plaintiff.
Burgess, Ryan Hicks, New York City, for defendant Minnesota Mining Manufacturing Co., Hanse H. Hamilton, New York City, of counsel.
The defendant Minnesota Mining Manufacturing Company (Minnesota) moves for an order staying plaintiff Audio Devices, Inc. (Audio) from the further prosecution of this action brought by Audio on June 8, 1955 against Minnesota and Armour Research Foundation of Illinois Institute of Technology (Armour) for a declaratory judgment that Camras pat. No. 2,694,656 be declared invalid and unenforceable and for appropriate injunctive relief (wherein by amended complaint, filed September 2, 1955, Audio avers that Armour is not subject to the jurisdiction of this court), pending the determination of an action commenced on May 27, 1955 by Armour against C.K. Williams Co., Inc. (Williams) in the United States District Court for the Eastern District of Illinois for infringement of said patent.
Movant offers the rule that a customer (Audio) of an alleged infringing manufacturer (Williams) may seek a stay of an infringement action against it pending the determination of an action against the manufacturer, as a basis that the converse should hold true and that Audio's suit here be stayed until the determination of Armour's Illinois suit against Williams. The relief sought might be dictated were Audio merely a customer of Williams using only the alleged infringing product of Williams.
Cf. Bechik Products, Inc. v. Flexible Products, Inc., 2 Cir., 225 F.2d 603.
Audio has alleged that if it infringes at all, it directly infringes the patent in suit not solely by reason of its purchase of some magnetic oxides from Williams, but by the manufacture and use of a greater amount of its own magnetic oxides. Hence, the issues in the Illinois action by Armour against Williams are not the same as in Audio's action in this court against Minnesota.
Considering therefore the vital interest that Audio has in its suit in this district wherein the issues raised are broader than those in Armour's suit against Williams in the Eastern District of Illinois to which Audio is not a party, I am utterly unconvinced that the interests of justice require that further proceedings here be stayed pending the determination of the litigation in the Illinois District Court.
Cf. Cresta Blanca Wine Co. v. Eastern Wine Corp., 2 Cir., 143 F.2d 1012; International Nickel Co. v. Ford Motor Co., D.C.S.D.N.Y., 108 F. Supp. 833.
Landis v. North American Co., 299 U.S. 248, 57 S.Ct. 163, 81 L.Ed. 153; Montro Corp. v. Prindle, D.C.S.D.N.Y., 105 F. Supp. 460.
Accordingly, the motion is denied and it is so ordered.