Majority — Frankfurter J.
delivered the opinion of the Court. .
The C-O-Two Fire Equipment Company, the respondent here, owns two patents, one issued on November 23, 1948, and the other reissued on August 23, 1949, for squeeze-grip valves and discharge heads for portable fire extinguishers. C-O-Two, incorporated in Delaware, has offices in Newark, New Jersey. On January 17, 1950, it commenced in the District Court for the Northern District of Illinois an action against the Acme Equipment Company for “making and causing to be made and selling and using” devices which were charged with infringing C-O-Two’s patents.
On March 9, 1950,. the petitioner Kerotest began in the District Court of Delaware this proceeding against C-O-Two for a declaration that the two patents sued on in the Illinois action are-invalid and that the devices which Kerotest manufactures and supplies to Acme, the
In Delaware, C-O-Two moved for a stay of the declaratory judgment action and Kerotest sought to enjoin C-O-Two from prosecuting the Illinois suit. “either as against Kerotest alone, or generally, as [the Delaware District Court might] deem just and proper."’ The District Court stayed the Delaware proceeding and refused to enjoin that in Illinois, subject to reexamination of the questions after 90 days, 85 U. S. P. Q. 185 . On appeal by Kerotest, the Court ó£ Appeals for the Third Circuit affirmed, holding that the District Court had not abused its discretion in staying the Delaware action for 90 days to permit it-to get “more information concerning the controverted status of Kerotest in the Illinois suit." 182 F. 2d 773 , 775.
During the 90-day period the Illinois District Court kllowed the joinder of Kerotest‘as a defendant, denying a. motion by Acme to stay the Illinois proceeding pending' disposition of the Delaware suit^and Kerotest. made a i general appearance. After 90 days both parties renewed their motions in Delaware, with Kerotest this time asking that C-O-Two be enjoined from prosecuting the Illinois suit only as to Kerotest. The District Court, a different judge sitting, enjoined C-O-Two from proceeding in- the Illinois-suit against Kerotest, and denied the stay of the Delaware action, largely acting on the assumption that rulings by its own and other Courts of Appeals required such a result except in “exceptional cases,” since the Delaware action between C-O-Two and Kerotest was commenced before Kerotest Vas made a defendant in the
. “. . . the whole of the war and all the parties to it are in the Chicago theatre and there only can-it be fought to a finish as the litigations are now cast. On the other hand if the battle is waged in the Delaware arena there is a strong probability that the Chicago suit nonetheless would have to be proceeded with for Acme is not and cannot be made a party to the Delaware litigation. The Chicago suit when adjudicated will bind all the parties in both cases. Why should there be two litigations where one will suffice? We can find no adequate reason. We assume, of course, that, there will be prompt' action in the Chicago theatre.” 88 U. S. P. Q. 335 , 337.
A petition for rehearing was, granted and the Court of Appeals,, the seven circuit judges sitting en banc, in an expanded opinion- from which two judges dissented, adhered to the views of the court of three judges. 189 F. 2d 31 , 89 U. S. P. Q. 411 . Inasmuch as a question of importance to the conduct of multiple litigation in the federal judicial system was involved, we granted certiorari. 342 U. S. 810 .
The Federal Declaratory Judgments Act,[1] facilitating as it does the initiation of litigation by different parties to many-sided transactions, has created complicated problems for coordinate courts.[2] Wise judicial .administratioñ, giving regard to conservation of judicial resources and comprehensive disposition of litigation, does not counsel rigid mechanical solution of such problems. The factors relevant to wise administration here are equitable in nature. Necessarily, an ample degree of
1 48 Stat. 955 , 28 U. S. C. §§ 2201-2202 .
2 See Developments in the Law — Declaratory Judgments, 1941— 1949, 62 Harv. L. Rev, 787 , 814-815, 866 (1949).
It was strongly pressed upon us that the résult below may encourage owners of weak patents to avoid real
3 Other cases in Courts of Appeals which present at all comparable situations do not show any rigid rule such as that under which the District Court felt constrained. In view of the basis of our decision it would not be profitable to discuss these cases in detail. It will suffice to indicate the concurrent controversies for which adjustment was sought. Triangle Conduit & Cable Co. v. National Elec. Prod. Corp., 125 F. 2d 1008 (C. A. 3d Cir.) (suit 1 — declaratory action by manufacturer against patentee; suit 2 — patentee sues manufacturer and customer for infringement: suit 2 enjoined as to manufacturer) ; Cresta Blanca Wine Co. v. Eastern Wine Corp., 143 F. 2d 1012 (C. A. 2d Cir.) (suit 1 — declaratory action by manufacturer against trademark owner; suit 2 — trademark owner sues manufacturer and distributor for infringement; thereafter, distributor seeks to intervene as plaintiff in suit 1: intervention denied and suit 2 enjoined as to manufacturer); Speed Products Co. v. Tinnerman Products, Inc., 83 U. S. App. D. C. 243 , 171 F. 2d 727 (suit 1— A sues Commissioner of Patents in District of Columbia for registration of trademark; suit 2 — suit by A in N. Y. against B alone for registration of trademark and for declaration of noninfringement of B’s mark; thereafter, B joins as defendant in suit 1 and files counterclaim for infringement of B’s mark: suit 2 not enjoined and suit 1 not advanced for trial); Hammett v. Warner Bros. Pictures, Inc., 176 F. 2d 145 (C. A. 2d Cir.) (suit 1 — alleged copyright owner sues broadcaster for infringement; suit 2 — declaratory action by writer for broadcaster against alleged copyright owner; thereafter, writer joined as defendant in suit 1: suit 2 dismissed); Remington Prod. Corp. v. American Aerovap, Inc., 192 F. 2d 872 (C. A. 2d Cir.), *185 December 4, 1951 (suit 1 — manufacturer and customer A bring declaratory action against patentee; suit 2 — patentee sues customers A, B, C, and D for infringement; thereafter, customer B joins as plaintiff in suit 1: suit 2 enjoined). By endorsing what was in effect an exercise of discretion by the Court of Appeals below upon consideration of the specific.circumstances .here, we neither approve nor throw doubt upon decisions by it or other Courts of Appeals.
The manufacturer who is charged with infringing a patent cannot stretch the Federal Declaratory Judgments Act to give' him a paramount right to choose the forum for trying out questions of infringement and validity. He is given an equal start in the race to the courthouse, not a headstart. If he is forehanded, subsequent suits against him by the patentee can within the trial court’s discretion be enjoined pending determination of the declaratory judgment suit,[4] and a judgment in his favor bars
4 See, e. g., Crosley Corp. v. Westinghouse Elec. & Mfg. Co., 130 F. 2d 474 (C. A. 3d Cir.); Carbide & Carbon Chemicals Corp. v. United States Industrial Chemicals, Inc., 140 F. 2d 47 (C. A. 4th Cir.); Independent Pneumatic Tool Co. v. Chicago Pneumatic Tool Co., 167 F. 2d 1002 (C. A. 7th Cir.).
The judgment below must be
Affirmed.
The Chief Justice and Mr. Justice Black dissent.
5 Kessler v. Eldred, 206 U. S. 285 .
6 It is suggested that Rule 15 (c) of the Federal (Rules of Civil .^Procedure makes the. joinder of Kerotest take the date, as it were, of the original action against Acme, which of course preceded the Delaware action. The equities of the_ situation do not depend on this argument.
Cases cited
- 182 F. 2d 773 182 F. 2d 773 p. 182
- 92 F. Supp. 943 92 F. Supp. 943 p. 183
- 189 F. 2d 31 189 F. 2d 31 p. 183
- Guessefeldt v. McGrath 342 U. S. 810 p. 183
- Graham & the Title Guaranty & Surety Co. v. United States 231 U. S. 474 p. 185