#### HOOK et al. v. HOOK & ACKERMAN, Inc.

Civ. A. No. 7990.

United States District Court' *W.*D. Pennsylvania.

July 12, 1951.

William B. Jaspert, Pittsburgh, Pa., for plaintiffs.

Harry Price, New York City, and Charles L. Cunningham (Stonecipher & Cunningham), Pittsburgh, Pa., for defendant.

BURNS, District Judge.

As I interpret the opinion of the Court of Appeals in reinstating the complaint, counterclaim, and cross-complaint in this case, Hook v. Hook & Ackerman, 3 Cir., 1951, 187 F.2d 52, the appellate court believes that this Court should decide the issues of patent infringement, threats of suits under claim of infringement, and unfair trade. As to any questions arising out of the assignment of the patent, the Court noted that suit would have tó be filed in a jurisdiction appropriate to the alleged mis-feasors.

Plaintiffs here seek summary judgment on the question óf patent infringement. Samples of the, machines have been produced in court, and affidavits and argument have been directed to the status of the prior act. I recognize the power of this Court to grant summary judgment in patent-infringement declaratory judgment proceedings; but I believe the facts of the case at bar militate against adoption of such action. Even, if it be assumed that this Court, in its discretion, could summarily dispose of the infringement question without also passing upon the unfair trade allegations of defendant, the close relationship between those issues in this case would deter me from attempting the exercise of such power. The public interest in this controversy dictates that the unfair trade aspects of this case be decided at the same time as are the patent infringement questions.

Moreover, summary judgment may be granted only when there is no genuine issue of material fact; and, in patent infringement cases, courts are likely to grant summary judgment only when the technical aspects are readily comprehensible and need little or no explanation by experts. See Steigleder v. Eberhard Faber Pencil Co., 1 Cir., 1949, 176 F.2d 604, certiorari denied 1949, 338 U.S. 893, 70 S.Ct. 244. In the case at bar, plaintiff does not attack the validity of the patent of defendant, but limits the invention of the patent to the *1023cycloidal curved shape of the boiler tubes and the interlocking flanges for enclosing the intermediate sections. Defendant not only denies that the boiler of plaintiffs differs substantially from that of defendant in those two respects, but also intimates that t'he boiler of defendant differs in other important ways from the prior art. On the basis of the information offered me in affidavits and oral argument, I cannot say that a material question of fact does not exist.

A number of other motions had also been pending when oral argument was had on the motion for summary judgment. At

the oral argument, counsel withdrew all such motions, except that defendant reasserted a motion for change of venue to the District of Columbia. This Court believes, and reaffirms what was said in an opinion dated April 25, 1951, that it would be highly desirable to adjudicate the entire controversy between the parties in one action where all concerned appear. The Court of Appeals, however, 187 F.2d at page 59, has indicated that the issues at bar can be tried in this District, and no cogent reason has been advanced for removing the case to a district in which none of the principals resides.