dissenting.
I am unable to agree that Judge Rodney was guilty of an abuse of discretion in this case. On the contrary I think that he soundly exercised the discretion confided in him by the rule which this court, sitting in banc, laid down in Triangle Conduit & Cable Co. v. National Elec. P. Corp., 3 Cir., 1942, 125 F.2d 1008, certiorari denied 316 U.S. 676, 62 S.Ct. 1046, 86 L.Ed. 1750. It is true that the majority do not say that Judge Rodney abused his discretion. Instead they ignore his careful weighing of the factors involved,1 intimate that he merely applied a “rule of thumb,” and themselves proceed to determine the matter as though they were the district court. Moreover while refusing to apply the rulé of the Triangle case the majority do not expressly overrule that case but rather seek to distinguish it on its facts from the present case. I concede that there is a factual distinction in that in the Triangle case the infringement suit by National against Triangle and its customer, Sears, Roebuck & Company, was begun after the declaratory judgment suit had been brought by Triangle against National, whereas here the infringement suit by C-O-Two against Ke-rotest’s customer, Acme Equipment Company, Inc., was begun before the declaratory judgment suit against C-O-Two was instituted by Kerotest.
In my opinion, however, the distinction made by the majority is without legal significance. To my mind the significant point is that Kerotest itself was not made a defendant in the infringement suit until after it had brought the declaratory judgment suit. In this respect the case is identical with the Triangle case. The two cases are also identical in that the litigation between the parties to the declaratory judgment suit was first begun by the institution of that suit while, if the controversies between the *36patent owner, the infringing manufacturer and its customer were to be litigated in a single lawsuit, it could only be done in the infringement suit. In the Triangle case we held nonetheless that the declaratory judgment suit, in which the rights of the patent owner against the infringing customer could not be litigated, must fake precedence over the infringement suit so far as the litigation between the patent owner and the infringing manufacturer was concerned.
The rule which this court laid down in the Triangle case, as well as in Crosley Corporation v. Hazeltine Corporation, 3 Cir., 1941, 122 F.2d 925, certiorari denied 315 U.S. 813, 62 S.Ct. 798, 86 L.Ed. 1211, and Crosley Corporation v. Westinghouse Elec. & Mfg. Co., 3 Cir., 1942, 130 F.2d 474, certiorari denied 317 U.S. 681, 63 S.Ct. 202, 87 L.Ed. 546, has had acceptance in at least five other circuits.2 I think it is particularly significant that in the Second Circuit in the case of Cresta Blanca Wine Co. v. Eastern Wine Corporation, 1944, 143 F.2d 1012, and in the District of Columbia Circuit in the' case of Speed Products Co. v. Tinnerman Products, 1948, 83 U.S.App.D.C. 243, 171 F.2d 727, the rule of the Triangle case has been applied to facts indistinguishable in principle from those in the case now before us. The majority ask us to compare those cases with their decision here and I .join in that request. For when such a comparison is made it will become plain that this court is today rejecting an application of the rule of the Triangle case which two other courts have heretofore made in reliance upon that decision by us.
In the Cresta Blanca Wine case Cresta had sued Eastern in the Southern District of New York for a declaratory judgment of noninfringement of a trade-mark. Thereafter Eastern sued Schenley and Cresta in the District of Delaware for infringement of the same mark. ' Schenley then applied for leave to intervene as a plaintiff in the suit in the Southern District of New York and both Cresta and Schen-ley asked that court to stay further proceedings in Delaware. The district court denied the intervention and the stay. The Court of Appeals reversed as to Cresta holding that the suit by Eastern in Delaware should be stayed as against Cresta since the suit in New York was prior as to those two parties. As to Schenley, however, the Court of Appeals affirmed, saying, 143 F.2d at page 1014:
“It can hardly be said that intervention, had it been granted, would have related back to the filing of Cresta’s complaint. Therefore Schenley’s proposed intervention against Eastern would have been the later action between them and the very principle Schenley invokes would require staying the New York action rather than'the Delaware suit.”
In the Speed Products case, the significant facts were these: Speed had brought suit against the Commissioner of Patents in the District of Columbia for the registration of a trade-mark. Shortly thereafter Speed sued Tinnerman in the Southern District of New York, seeking registration of the same mark and a declaratory judgment of noninfringement of Tinnerman’s trademarks. Later Tinnerman Was granted permission to intervene in the suit in the District of Columbia and it filed an answer and counterclaim for infringement of its trademarks. Thereafter Speed moved in the District of Columbia for an order suspending the suit there until the case in the Southern District of New York had been tried and Tinnerman moved for an order enjoining Speed from proceeding with the New York action until the suit in the District of Columbia had been tried. The District Court for the District of Columbia denied Speed’s motion and granted that of *37Tinnerman but this action was reversed by the Court of Appeals for the District of Columbia, the court saying, 171 F.2d at page 729:
“The second question is whether or not the District of Columbia court had power to enjoin Speed Products from proceeding with the New York action. The law on this question is well settled. Where two cases between the same parties on the same cause of action are commenced in two different Federal courts, the one which is commenced first is to be allowed to proceed to its conclusion first, and an injunction to accomplish this is proper. This is recognized by three cases: Triangle Conduit & Cable Co. v. National Elec. P. Corp., 3 Cir., 1942, 125 F.2d 1008, certiorari denied 1942, 316 U.S. 676, 62 S.Ct. 1046, 86 L.Ed. 1750; Crosley Corporation v. Hazeltine Corporation, 3 Cir., 1941, 122 F.2d 925; Cresta Blanca Wine Co. v. Eastern Wine Corporation, 2 Cir., 1944, 143 F.2d 1012.”
The majority place much reliance on a later case in the Second Circuit, Hammett v. Warner Brothers Pictures, 1949, 176 F.2d 145, 148. In that case, however, the district court after weighing all the factors decided in the exercise of its discretion that the declaratory suit should be dismissed. The Court of Appeals in affirming took occasion to point out that the question “was addressed to the sound discretion of the district court.” The court found no abuse of that discretion and rested its affirmance as well on the fact that disposition of the action for which priority was sought “would settle only a part of the controversy between the parties to it.” Under these circumstances it was clearly within the discretion of the district court not to apply the rule of the Triangle case. In the present case, however, C-O-Two’s entire cause of action against Kerotest may be heard and determined in the declaratory judgment proceeding presently pending in the District of Delaware. I cannot join in a judgment which holds by necessary inference that Judge Rodney abused his discretion in applying the rule of the Triangle case to this situation.
Judge KALODNER joins in this dissent.
. In his opinion, D.C., 92 F.Supp. 943, 947, Judge Rodney said:
“The question nevertheless arises as to whether this is one of those exceptional cases in which the taking of jurisdiction should be declined in favor of the later suit on the ground that the questions in controversy between the parties can be better settled and the relief sought be more expeditiously and effectively afforded in the Chicago action. The parties with which we are solely concerned are Kerotest and C-O-Two. Nothing is apparent to indicate that the Chicago action will settle the controversy between these parties better or more effectively. A date for the trial of the Chicago action is said to have been set for September, 1950, and this may give some apparent basis for the contention that the litigation there will be concluded more expeditiously. Whether the matter can be heard at that time must be problematical. There is nothing to indicate that with the full cooperation of the defendant, who allegedly is seeking an early trial, the trial in this jurisdiction may not be had expeditiously and some slight delay would seem too slim a basis for departure from recognized principles.”
. Dwinell-Wright Co. v. National Fruit Product Co., 1 Cir., 1942, 129 F.2d 848, 852, 853; Carbide & Carbon C. Corp. v. United States I. Chemicals, 4 Cir., 1944, 140 F.2d 47, 49; Cresta Blanca Wine Co. v. Eastern Wine Corporation, 2 Cir., 1944, 143 F.2d 1012, 1014; Speed Products Co. v. Tinnerman Products, 1948, 83 U.S.App.D.C. 243, 171 F.2d 727, 729; Chicago Pneumatic Tool Co. v. Hughes Tool Co., 10 Cir., 1950, 180 F.2d 97, 101, certiorari denied 340 U.S. 816, 71 S.Ct. 46.