This is an appeal from a summary judgment dismissing a suit for declaratory judgment determining the validity of Patent No. 1,748,007 for a guiding, floating and cementing device for well casings, now owned by appellee Baker Oil Tools, Inc. Appellees answered appellant’s complaint and then took appellant’s deposition under Rule 26 (a) of the Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c.
After taking the deposition (basing their motion upon the pleadings on file in the case and the admissions and statements of the appellant in his deposition), appellees filed their motion for summary judgment under Rule 56 of the Federal Rules of Civil Procedure, on the ground that the district court had no jurisdiction, in that there was no real and substantial controversy between the parties and that no justiciable issue was presented for determination. An affidavit in support of the motion and one against it were filed. The motion was granted and this appeal followed.
The determining question here is, Is this a case “of actual controversy” between the parties as that phrase is used in the declaratory relief statute? 28 U.S.C. § 400, 28 U.S.C.A. § 400.
The facts appear in uncontradicted allegations of the complaint and the deposition of appellant and the affidavits. Appellant had infringed the claims of the patent and on March 28, 1936, appellee Baker Oil1 Tools, Inc., instituted, by filing its verified complaint in the court below, a suit against appellant charging him with infringement of Letters Patent No. 1,748,007 (among other Letters Patent). Later, in January, 1939, after appellant had gone to the expense of preparing defenses to- that suit, and after appellant had set up in defense of that suit the circumstances relied upon as showing invalidity of Letters Patent No. 1,748,007, on motion of Baker Oil Tools, Inc., the suit was dismissed, so far as patent No. 1,748,007 was involved, without prejudice.
It also appears that appellee Baker Oil Tools, Inc., brought two suits for infringement against others; one in 1936 and another in 1938. Neither proceeded to a decision on the merits but were compromised and dismissed.
Commenting on similar conduct, the Third Circuit, in Treemond Co. v. Scher*1004ing Corp., 122 F.2d 702, 703, in determining the relation of the Declaratory Judgment Act to patent litigation, said
“Before the passage of that Act patentees received greater protection from the law than was warranted by their patent monopoly. Competitors desiring to introduce an article somewhat similar to one already patented met with much difficulty. The patentee could, without bringing suit, publicly claim an infringement and threaten to sue the manufacturer or anyone who dealt with the product in issue. Unless the patentee’s actions were of such a character that he might be shackled with the sanctions of the law of unfair competition, he had his alleged infringer at his mercy. Although the competitor’s business was gravely injured, he was remediless and in order to survive, he might be forced to make a settlement with a patentee whose claim of infringement was absolutely unfounded. Prior to the New Federal Rules of Civil Procedure, the patentee might even bolster his charges by bringing an action for infringement and publicly advertising the fact to the trade. Then after postponing trial as long as possible, he could move for a dismissal without prejudice and repeat the process.”
Insofar as a claim of infringement by the patentee may be necessary to make an actual controversy, we hold that there was such a claim at least up to the dismissal without prejudice of the suit against appellant on January 20, 1939, less than four years before the filing of the complaint in the instant suit. However, appellant well may assume that he is in jeopardy of an injunction and a controversy exist over that right of appellee corporation without any notice from it.
We agree with the statement of the opinion in the Treemond case that “Notice to infringers that a patent exists is not a condition precedent to a subsequent action to obtain an injunction in an infringement action'.”
Prior to commencing the instant suit, appellant had made several devices infringing the appellee’s patent if valid; he intends to make more; has proceeded to have available a large stock of piping necessary for their manufacture, owned by a friendly company with which appellant has other dealings and has an understanding that “if we become in possession of the rights to make guiding, floating and cementing devices that we want to make, we can draw on that stock.”
The district court did not regard these facts as sufficient to warrant commencement of the declaratory judgment proceeding. It mentioned none of them, but, instead, found
“That plaintiff Erd V. Crowell is not a manufacturer, has no manufacturing facilities, does not have any employees, and does not have any machinery with which to manufacture the device which plaintiff alleges infringes patent No. 1,748,007 in suit, and which he desires to manufacture and sell.
That plaintiff is not engaged in manufacturing the device which he alleges he desires to mánufacture and sell and which he alleges infringes patent No. 1,748,007 in suit.
That plaintiff has no written or oral contract for supplies for manufacturing the devices which plaintiff alleges he desires to manufacture and sell and which he alleges infringes patent No. 1,748,007.”
It is obvious that one may infringe a patent if he employ an agent for that purpose or have the offending articles manufactured for him by an independent contractor. We do not agree that it is necessary that appellant himself be a manufacturer of the alleged infringing devices or that he have machinery or manufacturing facilities or employees to make them or a written or an oral contract for supplies for such manufacture.
Appellant’s making of the several infringing devices and his intent to cause the production of more, evidenced by his understanding with a friendly company to supply him with the necessary material, are sufficient to invoke the right to sue the patent owner under the Declaratory Judgment Act. The purposes of that act are best served if a four-time infringer or a one-time infringer intending to challenge the validity of the patent, does not commit the economic waste of building or engaging another to build a plant to manufacture the alleged patented device before having determined the validity of the patent.
The district court should entertain appellant’s challenge of appellees’ patent.
The judgment is reversed.
Crowell v. Baker Oil Tools, Inc., D.C., 49 F.Supp. 552.