Fourco Glass Company v. Transmirra Products Corporation

PETITIONER:Fourco Glass Company
RESPONDENT:Transmirra Products Corporation
LOCATION:Congress

DOCKET NO.: 310
DECIDED BY: Warren Court (1957-1958)
LOWER COURT: United States Court of Appeals for the Second Circuit

CITATION: 353 US 222 (1957)
ARGUED: Apr 02, 1957
DECIDED: Apr 29, 1957

Facts of the case

Question

Audio Transcription for Oral Argument – April 02, 1957 in Fourco Glass Company v. Transmirra Products Corporation

Earl Warren:

Number 310, Fourco Glass Company, Petitioner, versus Transmirra Products Corporation, and Robert Aronstein.

Mr. Irons.

Edward S. Irons:

Mr. Chief Justice, may it please the Court.

This case presents the question of construction of the special patent venue statute, Section 1400 (b) of Title 28.

The petitioner is a West Virginia corporation who has a place of business in New York City but who has committed no acts of infringement there.

The respondent is a New York corporation and owns a patent.

The respondent sued the petitioner for patent infringement in the Southern District of New York.

The petitioner moved to dismiss on the ground that the venue requirements of the special patent venue statute, Section 1400 (b), were not satisfied since the petitioner was not a New York corporation and had not infringed in the Southern District of New York.

The District Court granted the petition.

The Court of Appeals reversed.

This Court granted certiorari in view of the conflict of the decision of the Court of Appeals with contrary decisions of other circuits on the same question.

The specific question with respect to which this Court granted certiorari is reproduced on page 2 of the respondent’s opening brief, the light (Inaudible) brief and is whether the 1948 revision of the Judicial Code changes the law and enlarges the permissible venue for patent infringement actions against corporate as distinguished from non-corporate defendants.

To permit a suit against the corporation in a judicial district where the corporation has not infringed and is not incorporated but is merely doing business.

In the consideration of this question, it is fundamental initially to recognize that Congress in the 1897, as a matter of policy, placed patent venue in a special category.

The history of the 1897, first special patent venue statute, the reasons for its enactment as a matter of policy and the fact that by such policy, patent venue was placed in a special category were all thoroughly considered by this Court in Stonite against Melvin Lloyd and I will, therefore, not review them in detail here.

The significant ultimate fact as this Court noted in Stonite is, “The Act of 1897 was adopted to define the exact jurisdiction of the federal courts in actions to enforce patent rights and thus, eliminate the uncertainty produced by conflicting decisions on the applicability of the Act of 1887 as amended to such litigation.”

That purpose indicates that Congress did not intend the Act of 1897 to dovetail with the general provisions relating to venue in civil suits.

Felix Frankfurter:

May I — may I interrupt to ask you whether the difficulties referred to created by the 1887 Act were difficulties peculiar to patent or whether the general difficulties about residents, inhabitants and all that business?

Edward S. Irons:

Mr. Justice Frankfurter, the answer is that the difficulties were particularly oppressive as regards to patents but also extended to other areas.

Felix Frankfurter:

They covered the whole area of jurisdiction in the federal court.

Edward S. Irons:

Yes, but it — in the Stonite case, this Court referred to the decision in Bowers against Atlantic.

I will just read one sentence from that decision.

It said, “The purpose of the Act,” referring to the 1887 Act, “was to narrow federal jurisdiction and it may be inferred that Congress intended to limit it to all classes of actions, infringement suits included for in no branch were complaints of injustice and oppression more numerous.”

That is in no branch than infringement suit.

Felix Frankfurter:

Or — or the complaint —

Edward S. Irons:

Yes.

Felix Frankfurter:

— is not having a restrictive venue more numerous?

Edward S. Irons:

Yes, sir.

So, with this thought in mind, the Congress enacted the first special patent venue statute in 1897.

That first special patent venue statute is reproduced on page 8 of the opposer’s opening brief, the same brief that I called Your Honors attention to previously.

Edward S. Irons:

And it is significant that that venue provision set forth to —

Harold Burton:

That is the petitioner’s brief you’re talking about, isn’t it?

Edward S. Irons:

Yes, sir, did I misspeak myself?

I’m sorry.

Page 8 of the petitioner’s brief.

The Act is reproduced on top of that page and as will appear, it specifies two alternative venue provisions.

It states that in suits brought for the infringement of letters patent, the circuit courts of the United States shall have jurisdiction, in law or in equity, first, in the district of which the defendant is an inhabitant or second, in any district where the defendant, whether a person, partnership or corporation shall have committed acts of infringement and have a regular and established place of business.

That Act contained a commensurate process section which constitutes the second sentence of it, which provides that if the suit is brought in the district in which the defendant is not an inhabitant, but where the defendant has a regular and established place of business, service may be head upon the agent’s conducting the business.

Felix Frankfurter:

An inhabitant roughly meant incorporated?

Edward S. Irons:

As there can be no question at that time as far as corporations are concerned.

It meant state of incorporation, yes, sir.

The Act of —

Felix Frankfurter:

So that the practical, the — let’s see what the reality of this problem is.

You contend that suit maybe brought in any federal district in which the corporation does business in the sense in which this Court has now held doing business means in the International Shoe case, is that right?

Edward S. Irons:

No, sir, that is what the respondent contends.

Felix Frankfurter:

What?

Edward S. Irons:

That is what the respondent contends.

Felix Frankfurter:

(Voice Overlap) I mean that — I beg your pardon.

Edward S. Irons:

Yes, sir.

That is the contention of the respondent.

Felix Frankfurter:

What?

Edward S. Irons:

That is the contention of the respondent.

Felix Frankfurter:

I thought you are urged to ask the respondent.

Edward S. Irons:

Yes, sir.

Felix Frankfurter:

And you — you rejected it?

Edward S. Irons:

I rejected it.

Felix Frankfurter:

That’s what the Court of Appeals held.

Edward S. Irons:

That’s right.

Felix Frankfurter:

The division is between those who say wherever — wherever the corporation does business in the International Shoe sense, is that right?

Edward S. Irons:

Yes, sir.

Felix Frankfurter:

Never mind whether it’s incorporated in that state.

Never mind whether an infringement took place there.

And that’s an allowable venue.

Edward S. Irons:

That is the contention of —

Felix Frankfurter:

In contrary, the contention is that the 1897 Act persists.

Edward S. Irons:

Yes, sir.

Felix Frankfurter:

That’s your position, namely, either you must sue where the corporation has its home where it’s chartered or whether infringement took place?

Edward S. Irons:

Yes, sir.

That’s exactly right.

Felix Frankfurter:

And that you carved and that the specialized venue provision of the 1897 continues and isn’t absorbed by or extended by, whichever where you want to look at it, by the general venue provision?

Edward S. Irons:

Yes, sir.

That is exactly the issue.

The 1897 Act was recodified in 1911 and again in 1926 without material change.

At the time of the adoption of the presently effective special patent venue section in 1948, it had universally been construed to limit venue and infringement cases against corporate defendants to the state of incorporation or to the district where an infringement liability had been created and not to extend to districts where the corporation was merely doing business.

Felix Frankfurter:

Is it fair to take judicial notice of the fact — I mean is it fairly accurate to state judicial notice of the fact that the infringes normally that overwhelmingly be the corporate infringes or is that to do this as well?

I don’t know if it had any relevance.

I just want to —

Edward S. Irons:

I agree with your later statement.

I don’t think it’s relevant.

I see no reason to take acknowledgement or not to take notice of it.

Felix Frankfurter:

But one can take notice of it.

Edward S. Irons:

Certainly.

Now, this 1897 Act which was recodified as 1400 (b) resulted in a statute which in terms of language is almost identical with the prior law.

Section 1400 (b) is reproduced on the final page of the petitioner’s brief and I think it well to look at it.

It’s the second quoted statute in the middle of that page.

It’s page 38.

It says, “Any civil action for patent infringement — “ I beg your pardon?

“Any civil action for patent infringement may be brought in the judicial district where the defendant resides, corresponding to the first alternative of the old Act, or where the defendant has committed acts of infringement and has a regular and established place of business.”

It will be observed.

The language here is almost the same as the language in the prior Act.

Edward S. Irons:

Now, we come to the crux of the matter, which has given rise to the controversy.

The court below and the respondent’s contentions all boiled down to the argument that the mere substitution of the word “resides” in the first alternative in this Section 1400 (b), for the word “inhabitant” which was used in the prior Act by such substitution, they contend that Congress has effective, a fundamental change in policy, as respects patent venue, pursuant to which patent venue is changed from its special status and is made commensurate with venue in civil cases generally.

Felix Frankfurter:

Well, I didn’t understand that that was your —

Edward S. Irons:

Particularly, as regards to corporate — I beg your pardon, sir.

Felix Frankfurter:

I didn’t understand that was the argument.

I understood the argument was that the generality of the venue statute has been qualified by the limited patent venue provision.

Edward S. Irons:

Well, I think the argument is better stated the other way.

The special provisions of the patent venue statute are not in large here with the generality of the corporate statute.

Felix Frankfurter:

Whichever you will have.

Edward S. Irons:

But the result, Your Honor, is this.

You have a special venue statute, which has existed for 50 or 55 years or 50 years at the time of the 1948 recodification.

It has been an established policy of Congress.

Three times reaffirmed that patent venue should be special.

Now, if you, in graft and insert into this Act, the general corporate provisions, you don’t have a special venue statute anymore.

Felix Frankfurter:

I understand that argument.

Edward S. Irons:

So, the policy is destroyed.

Felix Frankfurter:

I was addressing myself to your suggestion that it all turns on the word “reside” —

Edward S. Irons:

Well —

Felix Frankfurter:

— rather than, if you have no patents — suppose you have no special patent venue statute, no venue statute, specifically directed towards patent litigation, then the general venue statute was governed, wouldn’t it?

Edward S. Irons:

Yes, sir.

William J. Brennan, Jr.:

What did the court below do with our Stonite case?

Edward S. Irons:

The — the — excuse me, the court below, Your Honor, gave lift service to the Stonite case and then ignored it.

I will read to you exactly what the court below said.

It is in the record, page — I think the opinion begins on page 5 of the record and this portion of it is on page 6, the last full paragraph on page 6.

The Court says this, “As was held with respect to earlier litigation —

William J. Brennan, Jr.:

Legislation.

Edward S. Irons:

Legislation.

“The second provision should control here.”

That is the special patent venue statute, which is quoted up there, citing Stonite as its authority, which is quite proper.

Then, the Court continues, “Even so, that requires but the insertion in it in the special statute.”

William J. Brennan, Jr.:

That’s what we refused to do in Stonite.

Edward S. Irons:

That’s exactly what you refused to do, is insert in the special patent venue.

It wasn’t this particular one.

It was the one where the — the — it was now 1392 (a).

William J. Brennan, Jr.:

So, that was before the revision?

Edward S. Irons:

Yes, sir, in 1942 was Stonite.

This Court acknowledged Stonite and then did exactly what the mandate of Stonite forecloses.

It inserted into the special patent venue statute, the general venue provisions.

And as we shall see as we start —

Felix Frankfurter:

If we had done that in Stonite, the result would have been the opposite of Stonite, wasn’t it?

Edward S. Irons:

Yes, sir.

Now, let us look if we may at this word, the substitution of words and as you will see, this is the only basis which these respondents have in support of their contention that the patent venue has been enlarged by 1400 (b).

It’s this substitution of reside for inhabitant.

What did reside and what —

Felix Frankfurter:

Did you continue to say substitution?

Edward S. Irons:

Yes, sir.

Felix Frankfurter:

I suggest its absorption.

It isn’t merely that we abstracly define that you — that this case requires us to define reside in a particular way.

As I understand the opinion of the Court of — this Court of Appeals and based on other judges, it means that the general venue statute is incorporated into the patent statute.

Edward S. Irons:

Yes, sir.

Felix Frankfurter:

Is that right?

Edward S. Irons:

That’s what they have held.

Yes, sir.

Felix Frankfurter:

So, it isn’t merely a question of interpreting a word in the special patent statute.

Edward S. Irons:

Well, it is a — it is a question.

I would suggest determining whether Congress in the enactment of 1400 (b) intended that such absorption be effective.

Felix Frankfurter:

That’s all right.

Edward S. Irons:

All right.

And they have changed that Congress made in the law was to substitute “resides” for “inhabitant.”

That’s the only evidence of intent that has any real — that — that is worthy of (Voice Overlap) —

Felix Frankfurter:

Justice Clark —

Edward S. Irons:

— of discussion.

Felix Frankfurter:

— is quite candid.

He said that insertion, in other words, you — you read the special patent statute by — with the annotation of — or what I call the absorption into by infiltration of the general venue statute.

It’s merely a question of how the problem is stated which may —

Edward S. Irons:

Yes, sir, all right.

Felix Frankfurter:

Or it isn’t as though we had an independent, as though we had only this patent venue provision to call upon to construe it as a self-contained provision of law, but the Clark opinion and the other opinions that hold that say is that you shouldn’t cut down.

I know you understood it the other way.

Edward S. Irons:

Surely.

Felix Frankfurter:

You shouldn’t cut down the generality of venue by the specific provisions as to patent.

Edward S. Irons:

I would respectfully suggest that certainly, that’s their position and I think the fallacy they fall into, if I may say so, is that it is a rather well established doctrine as I understand it that successor acts are presumed to be perpetuate the prior law in the absence of evidence to the contrary.

Felix Frankfurter:

But by stating their position, I don’t mean to agree with them.

Edward S. Irons:

I understand that, but I would like to suggest that you have to get there.

They ignored this rule.

They say, “The law is changed unless we can find some evidence — evidence that it isn’t.”

And by shifting the burden of proof as it were, we have to presume under the law that the statute was not changed, unless we can find evidence that it is.

This people can’t meet these lower courts, can’t meet that burden.

And so, they say, “Unless we have some evidence that it is not changed, we will presume that it has been.”

That is how they reached their results.

I don’t want to belabor this inhabitant and resides business to the point of annoyance, but I would like to say two more things about it because it is going to become repeatedly important in the consideration of this case.

In the first place, inhabitant and resides were synonymous when this Act was passed and they both meant domicile and they both meant the state of incorporation as far as corporate — corporation defendants are concerned.

In Suttle against Reich, 333 U.S. 163, handed down in 1948, this Court said, “The residence of a corporation within the meaning of these statutes has been frequently the subject of consideration by this Court for over half a century.

Shortly after Congress enacted Article 51 of the Judicial Code, this Court declared that the residence of a corporation within the meaning of the venue statutes is only the State and district in which it has been incorporated.”

This statement has often been reaffirmed by this Court with some change of phrase but always retaining the idea of the legal existence, the home, the domicile, the habitat, the resident, the citizenship of the corporation can only be in the state by which it was created for almost 60 years and an unbroken line of decisions, this Court has always applied the same construction.

Now —

Felix Frankfurter:

That is no longer true, is it?

That is no longer true, meaning by that as we — since — since International Shoe, which came later and still later cases, now allow venue that you brought in the state of doing business, don’t they, as to the record?

Edward S. Irons:

Not by abrogation of — of the rule but residence and inhabitant are synonymous, Your Honor.

Now, this very case, one of the cases you undoubtedly have in mind is Neirbo, which invoked the waiver doctrine.

This very case from which I was reading says, “Nor does the decision of this Court in Neirbo required that the term residence be construed differently.”

Edward S. Irons:

The International Shoe was a due process case as I remember in which the — the issue was whether or not the due process was satisfied by allowing service of process on the basis of a salesman who would travel through the State of Washington.

Felix Frankfurter:

But haven’t we carried — haven’t we carried — hasn’t this Court carried what was decided in the matter of due process in the International Shoe?

Haven’t we carried that over to non-due process situations?

Edward S. Irons:

I think for —

Felix Frankfurter:

As the recent case in the Seventh Circuit who came here.

I forgot what the name of that case, (Inaudible)

Edward S. Irons:

I’m not familiar with it.

I would suggest this as far as this particular case is concerned, yes.

Let’s concede that as far as general corporate venue is concerned.

This Court has never in Stonite’s decision — that Stonite decision of this Court squarely ruled against in any such enlargement of the special patent venue.

I have one more comment to make about resident and I will then say no more about it.

But there can be really no question about what this Congress had in mind when they used resident in 1400 (b).

I would ask the Court to refer to page 15 of the petitioner’s brief.

On that page and on the preceding page are the reviser’s notes which accompanied 1400 (b) and as this Court knows, the Congress was particularly careful in the adoption of this law to see to it that all changes were reflected in these notes.

This Court has even said that these notes are obviously authoritative in perceiving the meaning of the statute.

Let us look at the number at paragraph 4 on page 15 of the brief from the reviser’s notes.

It says, “Words in subsection (b), where the defendant resides, were substituted for of which the defendant is an inhabitant.”

A corresponding change was made in subsection (a), words “inhabitant” and “resident” as respects of venue are synonymous citing a note under 1391, which says the same thing and which cites three United States Supreme Court cases which say they both mean domicile and as to corporations mean state of incorporation.

If it please the Court, this patent venue Section 1400 (b) on its face is clear.

It presents no problem.

It means exactly what the prior Act meant.

It says we can have venue where the defendant resides.

That’s where he’s domicile.

That’s what the old Act says.

It says we can have venue where he has a place of business and where he has infringed.

That’s what the old Act said.

We don’t have any trouble with this statute until we try to do what the court below did and grabbed the bond, the general venue provisions from the general corporate venue law.

And when we do that, we have a great deal of trouble.

Just by way of introduction, I would ask the Court to look again at the final page of our opening brief where the statutes are reproduced.

The final statute on that page is the process statute, 1694, which also had its genesis in the 1897 Act and is now been recodified separately from 1400 (b).

Edward S. Irons:

It says, “Any patent infringement suit commenced in a district where the defendant is not a resident, not a resident, but has a regular and established place of business, service or process may be head upon his agent or agents conducting such business.”

I feel that it is of controlling significance insofar as trying to discern what the scope of 1400 (b) was intended by Congress to be that this process section expressly recognizes that for patent infringement cases, the mere establishment of a place of business does not make a corporate defendant a resident of that district.

Now, this is one of the minor incongruities.

I would now point out that the engrafting on this special patent venue statute of the general venue provisions completely vitiates it as a special venue statute and as a venue limitation.

In this respect, I think it is perhaps easiest to follow the result if we look at the statute as modified in the way in which the defendants would have it or the respondents would have it modified.

I would ask the Court to look at our brief on page 21.

In the center of that page, we have reproduced this special patent venue statute, Section 1400 (b).

And having grafted upon it, the provisions of the general venue law as did the court below and as so amended, it would read as follows.

“Any civil action against the corporation for patent infringement may be brought in the judicial district where the defendant resides to wit the judicial district in which it is incorporated or licensed to do business or is doing business or where it has committed acts of infringement and has a regular and established place of business.”

It seems obvious that the first alternative thus reconstituted becomes abortive as a venue of limitation, as a definition of special venue in light of 1391 (c) and the second alternative becomes meaningless and surplusage as far as corporations are concerned.

Felix Frankfurter:

Would you be good enough to indicate what situations would be covered by the general — what situations would not be covered by the general venue statute if you didn’t have a particular patent venue statute?

Edward S. Irons:

What situations would not be covered by the general venue statute —

Felix Frankfurter:

What does — what situations does the special venue statute authorize that would not allow the same kind of suit that — that we had only the general venue statute?

Edward S. Irons:

I don’t — I don’t conceive of any.

I think the general venue statute is broader in all respects in the special.

Felix Frankfurter:

Let me put it this way.

Is there any — could you bring any suit that you may now bring under the special venue — patent venue statute that couldn’t be brought in the district, in the same district, in which you will bring it under special statute if that had been repealed and Congress had left nearly a general venue statute for all litigation in the federal courts?

Edward S. Irons:

I don’t conceive of any — any such case.

Felix Frankfurter:

That is the situations now whether the infringer either has his home incorporated.

Edward S. Irons:

Yes, sir.

Felix Frankfurter:

Or he commits an act of infringement, but how about doing business?

Can you do business in a district in which the corporation is either incorporated of the state in which neither incorporated, nor that the infringement constituting the doing of business?

Edward S. Irons:

Now, that’s exactly our case.

We were doing business in New York, but if we infringed, we did it in West Virginia.

That’s why the motion to dismiss was granted by the district judge.

Felix Frankfurter:

Judgment.

Now, suppose you — you have no specific statute.

Edward S. Irons:

Yes, sir.

Felix Frankfurter:

You couldn’t be sued, could you?

Edward S. Irons:

We could be sued either in West Virginia or in New York under the general statute.

Felix Frankfurter:

Under the general statute?

Edward S. Irons:

Yes, sir.

Felix Frankfurter:

But under the special statute, you could only be — you could be sued where you infringed and you could be sued in — what’s your home state?

Edward S. Irons:

West Virginia.

Felix Frankfurter:

West Virginia.

Edward S. Irons:

It happens to be where we infringed.

Felix Frankfurter:

You could be sued in — in your chartering state and where you infringed.

Edward S. Irons:

Yes, sir.

Felix Frankfurter:

But if you have a — say a vacancy in New York, you couldn’t be sued under the general — you could be sued under the general statute, is that right?

Edward S. Irons:

But not under the special one, unless that’s sale —

Felix Frankfurter:

Because the general statute gives you a wider range but doesn’t exclude anything that you now have under the special statute.

Edward S. Irons:

That’s the way I understand this.

Charles E. Whittaker:

Mr. Irons?

Edward S. Irons:

Yes, sir?

Charles E. Whittaker:

May I ask you, while the general statute, relative to corporations, venue as to corporations apply solely as to corporations, is there not still a broader purpose though in the special patent venue statute applicable to natural persons as well?

Edward S. Irons:

And perhaps, also partnerships, that is the rationale the court below stated.

They said there is a residue of utility as regards to partnerships and individuals.

Charles E. Whittaker:

So, it would not be true to say that the special patent venue statute serves no purpose.

That would be true only as respects to corporate defendants, wouldn’t it?

Edward S. Irons:

Yes, sir, but it would also be squarely contrary to the intent of Congress to make that provision apply to all defendants.

Charles E. Whittaker:

Yes.

Edward S. Irons:

And if Your Honor will bear with me, I would invite your attention to the petitioner’s opening brief on pages 23 and 24.

This is important and I think that you will be interested in it.

This court below, the Second Circuit said, “It is quite clear even under our construction that this provision does have a sphere of usefulness against non-corporate defendants,” and which is what you have suggested.

We suggest that the effect of this decision to arbitrarily restrict the utility of that provision to non-corporate defendants is in the teeth of the intent of Congress as reflected by the reviser’s notes.

Now, on — in the reviser’s notes, in the fifth note, it says, “Words whether a person, partnership or corporation which follow defendants in the old Act have been omitted as surplusage.”

And it is the obvious intent of Congress that this provision extend to all defendants.

This is just another of the incongruities that results when you try to engraft the general law on the special patent venue statute.

In conclusion, I think that there is probably an outstanding question and there has been in my mind how did these lower tribunals reached the conclusions they reached.

Why did they fall into what we contend to be the error?

Edward S. Irons:

I have touched on that question briefly.

I have suggested that they have refused to follow the rules, which require evidence of intent to change the law and have assumed that it was changed unless they can find some evidence of intent to the contrary.

The rules by which they do this has been to call Section 1391 (c), a definition section, which it clearly is not.

Again, if we may refer finally to the last page of the petitioner’s brief where the statute is reproduced and we look at 1391 (a) and 1391 (b) which are the diversity provisions.

Those are the only provisions, which use the word “resides”.

Now, in the reviser’s note, accompanying 1391, this is said, “Word “reside” was substituted for — were obvious an inhabitant for clarity in as much as inhabitant and resident are synonymous.”

Now, if the Court please, it is self evident that in 1391 (a) and in 1391 (b), resident, like it does in 1400 (b), means state of incorporation or domicile.

Congress having reached that point was faced with the proposition that as to corporate venue an exception, general corporate venue an exception to make the law consistent with Neirbo, Schlumberger, Gulf Oil, had to be enacted and so, they took care of that in 1391 (c).

1391 (c) is the exception on the general venue provision to make it consistent with the law as it existed in 1948.

And in closing, I will say that even if we accept this contention that 1391 (c) is a definition section.

This respondent cannot prevail.

In the case of Lawson versus Suwannee Fruit & Steamship Company reproduced on — in part of 32 of our brief, this Court held.

Statutory definitions control the meaning of statutory words, of course, in the usual case, but if this — but this is an unusual case.

If we read the definition in A.F. 1 in a mechanical fashion, we create obvious incongruities in the language and we destroy one of the major purposes of the second injury provision.

We have concluded that Congress would have not intended such a result.

Respondent’s argument boils down to the contention that Congress destroyed one of the cornerstones of the law and intended to codify.

That argument should not prevail.

Earl Warren:

Mr. Hulbert?

W. R. Hulbert:

May it please the Court.

I could not disagree more completely to what my brother said.

And I was trained in a law firm under a — an old timer who — when I came in with a half-baked interpretation of some statute which I found in a case, he told me to read the statute before I arrive at any further erroneous conclusions.

Now, I think it is most helpful if first, we look and see what this statute is, that we are talking about, that’s been classified by Mr. Irons as a special statute and it is perfectly true and we do not quarrel with his contention that the predecessor statute was a special statute.

And as a special statute, it was susceptible to the interpretation, which this Court gave it in the Stonite case.

But this 1948 codification and revision and this Court has indicated that it contains many revisions and many changes in the law.

The particular chapter here involved is called Chapter 87, District Court’s venue, and I — for convenience, I’m referring to the West Publishing Company pamphlet, which contains all the sections of this chapter in a single place.

From there, we find a chapter containing 16 sections.

The first section of which is Section 1391 and it is — it is subsection (c) of Section 1391, which is the first section we are considering and that is the section, which says that a corporation maybe sued in any district in which it is incorporated or licensed to the business and so on.

Now, in addition, that is the first section and purports to my mind, at least, to be a definition which is to be applied when the remaining sections of this chapter are read.

Now, we proceed with the remaining sections.

Felix Frankfurter:

Well, you can — you can start out with that as a postulate without begging the whole question.

Felix Frankfurter:

Did you say that 1391 is to be read into all the provisions that follow and then, of course, as an end of the matter?

W. R. Hulbert:

Well, that is the —

Felix Frankfurter:

I know that’s what this controversy is about.

W. R. Hulbert:

That is the conclusion I reach, Mr. Justice Frankfurter.

Felix Frankfurter:

Well, very well, but you can’t start out by saying that’s the definition statute and therefore, it must be read into everything that follows.

W. R. Hulbert:

That is my contention.

Felix Frankfurter:

Well, I — I — we’re listening to you with interest but I don’t want to have the conclusion stated by way of compulsion at the beginning.

W. R. Hulbert:

I didn’t intend to do that, Your Honor.

But one of my reasons for so stating is that looking at the remaining sections, we find that 1393, which has to do with divisions and defendants in different divisions uses the term “where he resides” and that’s in subsection (a) and subsection (b).

Again, you come back to the word — against defendants residing in different districts.”

In Section 1396, having to do with internal revenue taxes, another — shall we say special venue section, in the district of a taxpayer’s residence, Section 1397, having to do with interpleader, where the claimants reside.

Section 1398, Interstate Commerce Commission orders wherein as the residence or principal office of any of the parties bringing the action, Section 1400, “Patents and copyrights.”

The first subsection (a) has to do with copyrights where the defendant or his agent resides.

Subsection (b) is the one, which has already been discussed at length.

Section 1402, the United States as a defendant, maybe brought where the plaintiff resides.

Again, subsection (b), where the plaintiff resides.

Now, I submit that on the very face of this chapter, we have at the beginning of it a definition of a word which is then used apparently as a word of art in the various subsections and we come — and we come to the subsection or the section relating to patents and copyrights.

We find that word used just as it has been used in the other sections and without any hint or suggestion on the face of the Act, that it has to be given a different meaning.

Felix Frankfurter:

Except that every statute is — a statute that has a history, the history is not to be disregarded.

W. R. Hulbert:

Of course, it is not to be disregarded, Your Honor.

But if the plain words of the statute make a change, then we say that there is no reason to have recourse to the history.

Of course, the history is important in any event.

Now, the court below stated in its opinion that nothing could be plainer as a matter of words than reading subsection (b) of Section 1400.

The suit — this suit was authorized to be brought in the Southern District of New York.

Now, is there some reason — some compelling reason why this plain language should not be given effect?

Now, as a matter of fact in this case, there is no — there has got — there is no great argument of policy, no great injustice, which will be done or — or great irrational result which would be reached by deciding this case either way.

But as a — but I think to decide it, the way Mr. Irons has contended, introduced us more incongruities and makes it less rational than to decide it in a way I contend it.

The first thing on the very face of the Act, it has been done as I’ve already just stated, is to give the word “resides” in a section, which is just part of a chapter of any sections, a different meaning from the meaning that has been given in all the other sections apparently.

So, turning to the Revisers’ Notes, there, Mr. Irons has also contended that these notes plainly, as a matter of fact, state that what Congress intended to do was to make this Section 1400 (b) mean the same thing as the predecessor statute.

Now, that I cannot follow and I think referring, Your Honors, to the Revisers’ Notes, I can show that this is not necessarily so because — and here, I refer to the congressional pamphlet which both sides have referred to extensively in their briefs and which is a convenient summary of the Reviser’s Notes having to do with this codification.

W. R. Hulbert:

Section — under Section 1391, the Reviser’s first list of the sections of the prior law, which they were revising and codifying and they mentioned that the word “reside” was substituted for, where of he is an inhabitant for clarity in as much as inhabitant and resident are synonymous.

Now, this — in this Section 1391, they had just placed in the law the definition that a corporation resides or its residence is where it is doing business or includes the place where it’s doing business.

When we come to Section 1400, the note made by the Revisers refer this back to Section 1391, where they had just given the definition with respect to a corporation of the meaning of the word “residence.”

So, I submit that nothing could be plainer that they did change the law.

They meant —

Earl Warren:

Well, if — if that Reviser’s Note doesn’t mean what Mr. Irons said, what does it mean?

You say it doesn’t mean when he say it.

What — what does that language mean that I think why did they put up there that — that the two words are synonymous?

W. R. Hulbert:

Well, I think it is ambiguous and furthermore, it is possible they had in mind what was referred to by Mr. Justice Frankfurter earlier of the change of law with respect to corporations generally in the International Shoe case.

They didn’t mention that case, but as Judge Albert said in the Denis case, which we referred to in Massachusetts, in the District of Massachusetts.

If the notes are less — are more ambiguous in the statute, there’s no point in referring to the notes.

Earl Warren:

Well, I don’t see the ambiguity.

They — they merely say that the two words are synonymous and that’s why they used “resident” instead of “inhabitant.”

Now, what is the — what is it ambiguous about that?

W. R. Hulbert:

The only thing that it could be ambiguous is if you look behind it and read the cases which they then sight.

You’ll find that inhabitant made, in some of those cases at least, was found to mean the place of incorporation whereas —

Earl Warren:

Did they cite International Shoe as authority for this —

W. R. Hulbert:

No —

Earl Warren:

— to reach the point?

W. R. Hulbert:

— they did not, Your Honor.

No.

Earl Warren:

But you do.

W. R. Hulbert:

I do.

Yes, Your Honor.

Earl Warren:

Well, if they cite it in other cases, why wouldn’t they cite that?

W. R. Hulbert:

I don’t know what was in their mind, Your Honor.

Earl Warren:

Well, I — I don’t either and I thought you said a little while ago that we — we should read the statute rather than to —

W. R. Hulbert:

Refer to the notes.

Earl Warren:

— in the situation of this kind.

I agree with you, it’s pretty good thing to do, but what does it mean?

Earl Warren:

What can it mean if — and why did they — they changed it from resident to inhabitant if it wasn’t because they say that the two words were synonymous?

W. R. Hulbert:

All I can say is — on that, Your Honor, that they had just in the earlier part of the chapter or even right in that part where they are discussing it under 1391, given a definition of residence of a corporation.

And then, they proceeded to use that word and stated that residence and inhabitant meant the same thing.

Why they cited those cases, I do not know.

Felix Frankfurter:

Mr. Hulbert, what worries me is that that mode of dealing with this problem leads out the central what to me is the central fact, namely, that good, bad or indifferent reasons, would be enough for me to inquire.

The Congress thought — in 1391, it was efficiently first clothed that separate treatment is required to patent litigation.

Now, what you’re saying is that that motive, that purpose, that aim of Congress summarily evaporated except to the limited class of individual infringes that would remain as to whom 1391 would still have application.

And at that point, I draw on my knowledge that most infringement of corporations, wasn’t it?

I mean 1400.

That 14 — that — that — for some good reasons which we’ve dealt with in the initial case, the Congress thought patent litigation should be differently dealt with and carve it out and it continued to carve it out.

And you practically — the construction of the court below and of judges are go with this difficulty I have with the case, the problem is the eminent judges for whom I have great respect, very great respect, some of them in dissent in other circuits who held otherwise.

But what I can’t rid my mind and certainly ready to have it ridden by — with, that here were the special venue statute, a special venue statute directly toward this type of litigation, which Congress continued and which, if the construction of the court below is to prevail, would have a consumptive infringement frontally almost obliterated effect.

W. R. Hulbert:

One of the answers to that, Your Honor, I think is found in the — in the history of patent venue which Mr. Irons did not go into and which we have dealt with rather at length in our brief because we feel it is an argument which was not brought before this Court in the Stonite case.

Felix Frankfurter:

But if you’re asking us to reconsider Stonite, I — I will listen with more understanding to the argument.

W. R. Hulbert:

I do not believe it is necessary to reconsider Stonite, Your Honor, because we were dealing with a different statute at that time in which the general venue provision was very clearly dependent onto a — a — the first general venue provision whereas the patent venue statute was an entirely — it was entirely apart.

It was a single part.

Felix Frankfurter:

Do you mean physically apart?

W. R. Hulbert:

Yes and —

Felix Frankfurter:

Yes, but the 1948 codification is merely putting things — making things more tidy.

You can’t out of that to my point of view.

I do not think that’s the way to construe that codification that it made — made the changes simply by bringing cognitive things under one chapter here.

That was not — when one — when one thinks about it and have some knowledge at the time, I mean any reflection, but the manner in which that was done and the purpose of it.

The kind of over started was and was not given.

I don’t think we would be justified.

I would not be justified going drastic differences, the drastic changes in the law, typically, law of jurisdictional procedure because it simply made the law more tidy.

W. R. Hulbert:

Well, I think, Your Honor, they did more than that and that they assembled in one place, the different specials, acts and statutes relating to venue.

And at the very beginning, they defined the term, which you will find used in most to those sections but (Voice Overlap) —

Felix Frankfurter:

That is your strong point, if I may say so, but I do not think it answers the question of Chief Justice.

W. R. Hulbert:

I have another —

Felix Frankfurter:

But the long side of it would be to revise and say, “We haven’t changed the word.”

Felix Frankfurter:

If the word inhabitant has been left, we wouldn’t have an argument and they say resident equals inhabitant, then you say, “Oh, that you got to go to 1391 to find what type of residence means and thereby change what habitant — inhabitant did mean.

That’s being fair to your argument, isn’t it?

W. R. Hulbert:

I think that’s being fair.

Yes, sir, but I have still another strong point, which has not yet been mentioned today.

And that is, I believe and I submit, that we have shown that the history of patent venue is in accord with a liberal interpretation of this section because of the change of this word.

And we go back to the Act of 1887, which was a restrictive general venue provision.

Prior to 1887, suits might be brought against persons where they were found among other places.

And in 1887, because of abuses and these are the abuses, which Congress had in mind which we show from the history of the 1887 Act of what — what was said in contemporary decisions.

The abuses which the Congress had in mind were under this general venue provision and it was not — and when that was passed in a very restrictive way, it was only after the (Inaudible) case, which we referred to in our brief, where — in order to avoid a perfectly absurd result that a citizen would — would not have any district in which he could sue an alien for patent infringement.

This Court held that the general venue statute of 1887 did not apply to patent cases — applied to cases arising under the law of the United States where a citizen was suing an alien especially for patent infringement.

Now, that was necessary because there would be no part in which such a suit could be brought if the 1887 Act were interpreted as applying.

Then, the 1897 Act which provided for — for the first time specifically for venue and patent cases, there is no hint or suggestion that we can find in the actual history.

And at this point, I might mention the Bowers case, which has already have been mentioned where the — the Court referred to the supposed abuses, which had the reason in patent cases.

We don’t know where the judge got that idea because we did not find it in the actual history.

Felix Frankfurter:

What — what was that case, Mr. Hulbert?

W. R. Hulbert:

The Bowers case, Your Honor.

Felix Frankfurter:

Who was the judge?

From the District of New York, who was the judge?

Was it Brown, (Inaudible)

If you happen to know him — don’t bother.

W. R. Hulbert:

I don’t have to know, Your Honor.

Judge Schatz.

Felix Frankfurter:

Judge Schatz.

Well, those are — those men on the Southern District of New York as you well know, knew a great deal about patent litigation.

W. R. Hulbert:

Perhaps, there were abuses, which were known locally, but at least —

Felix Frankfurter:

Not in Boston clearly.

W. R. Hulbert:

Not in Boston, Your Honor.[Laughs]

But the — the pertinent legislative history, particularly, the statements which were made on the floor of Congress, both the Senate and the House, is to why the special Act of 1897 was being passed did not refer to abuses relating to any unrestricted venue in patent cases.

As a matter of fact, the abuses which they referred to were because of a supposed restricted venue and we find such statements as the fact that business is going west and the — the Congress was afraid that — that eastern businesses, eastern corporations would be committing infringing acts injuring perspective plaintiffs out in the west and that those complainants would be unable to bring suit of where they were being injured.

And for the reason, the patent — the patent venue section of 1897 was broader.

W. R. Hulbert:

It was being purposely made broader than venue general.

Now, it is our contention of that in codifying the law in 1948, particularly, having reference to the philosophy of the International Shoe and other cases that the Revisers must have had in mind that the corporations now should again be subject to suit for patent infringement on at least its broader basis as defendants generally in other cases.

And I, particularly, wish to call this Court’s attention to the fact that this history, which I have just mentioned, was not at least to brought — it was not brought to the attention of this Court in the briefs in the Stonite case.

And possibly, the Stonite decision might have been different if that had been done.

Turning to the next point, it has been repeatedly stated by my brother that this 1948 Act constitutes a codification and as such any statute in it which has a predecessor statute should be construed in the same way.

Now, I would call this Court’s attention to a number of decisions which are in our brief indicating that many courts in construing this Act had many time stated that it is more of a mere codification but a revision and contains many changes, not the list of which was the change are made in Section 1391 (c) itself, corporate venue generally using the definition of residence which was an important change and which went beyond the way reduction in the Neirbo case.

Now, that change was not reflected in the Revisers’ Notes and that’s just one of many.

As a matter of fact, there are some indication that the Revisers’ Notes while purporting to point out every physical change, that is change of wording and text, by no means are purported to point out all changes of meaning in substance.

The Revisers, (Inaudible)

W. R. Hulbert:

The Revisers were a Committee, I believe, appointed by this Court.

Felix Frankfurter:

No, oh, no.

W. R. Hulbert:

No.

(Inaudible)

W. R. Hulbert:

Oh, well, they did the job — physical job but I understand that they collected a great deal of information and comments and suggestions from the bench and the bar generally.

Well, all I meant was (Inaudible)

W. R. Hulbert:

That may be so, Your Honor.

Felix Frankfurter:

We were certainly not talking about any glasses of Congress from the issue.

W. R. Hulbert:

No, sir.

Felix Frankfurter:

Except and insofar as they acted on the — on the proposed code with the — with the notes of the Revisers.

W. R. Hulbert:

Yes sir.

Now, the Lawson case was mentioned as authority for not construing the Section — Section 1400 (b) as we suggest that it should be construed.

And I suggest to the Court that the Lawson case is clearly distinguishable.

This was a case involving a second accident to a person who had been injured and an interpretation of the word “disability” in the Federal Employers’ Liability Act.

It should be pointed out that a mechanical reading of the definition, which had previously been given of the word “disability” resulted in — in making very poor sense out of the section in question and secondly, defeated an apparent major purpose of Congress in passing the Act as was reflected by some of the comments in the hearing on the bill.

And finally, I would like to reiterate that using the definitions, which has been given in this codification, in this section rather in this chapter, we arrived at a result which it makes perfect sense logically, which produces no great inequity and which makes the whole chapter involving the other special sections on venue to read as a logical hole.

I would say there would be ample reason to resort to twisting words out of their apparent meaning as given in — in a definition if some illogical, unreasonable or oppressive result would be reach.

Now, but here, I think a very beneficial result can be reached in applying a broader venue with respect to patent infringers having in mind the transfer provisions of Section 1404, which are clearly — which are clearly new in the code and which make provision for a transfer of patent litigation cases from any district in which they were brought oppressively to a district which is more convenient for the parties and the witnesses.

And read with the transfer of provisions, I submit that Section 1400 (b) that makes perfect sense in reading it and using the definition and which is provided in the first part of the chapter.

Earl Warren:

Thank you Mr. Hulbert.

Mr. Irons, do you have anything further?

Edward S. Irons:

I have, sir, very brief comments, Your Honor.

If the Court please, I think in the first place, it is self evident why those decisions where cited by the Revisers’ Notes with respect to the substitution of an evident or resident or conversely.

Every one of those decisions, say, that those words are synonymous because they mean domicile and as to corporations, they mean state of incorporation.

They couldn’t have been more explicit.

We have had it suggested here that this history argument based on the history of the 1897 Act, somehow or another should lead this Court to reach a different result than it did in Stonite.

We are told that this history was not before the Court in Stonite.

The fact is that this is the same old argument, which was advanced before the Court of Appeals with the Third Circuit in — in Stonite.

It was on that argument that the Court of Appeals based its decision and this Court reversed.

By reference to page 4 of our reply brief, it would be noted that the Court of Appeals in Stonite stated are historical review that revealed that Congress has always accorded patent litigants a broader venue, then that extended to other civil litigants.

In light of this history, it hardly seems like it that Congress intended by the Act of 1897 to withdraw from patent litigants that statewide venue and had accorded from the beginning to all others.

This is the identical argument which has urged on you again today and which was rejected in the Stonite case.

There was an argument made that some significance should attach to the fact that 1400 (b) and 1391 are in the same Act, so same argument was advanced in Stonite.

This Court said, “The reenactment of the Act of 1897 as Section 48 and R.S. 740 of Section 52 of the Judicial Code is not indicative of any congressional understanding that the two sections are complementary.

And we have been told that the Revisers collected a lot of information to guide Congress in the reenactment of the law.

There is no evidence in kind, the Revisers did not gather any information on the reenactment of the special patent venue law.

It was reenacted without change.

The only comment about venue that we have been able to find in the Revisers’ Notes is in the House Report, which say, “So also, minor changes were made in the provisions regulating the venue of the District Courts to clarify ambiguities and reconcile conflicts.”

These are reflected in the Revisers’ Notes.

There is no indication in the Revisers’ Notes of any change in venue in special patent cases.