Appeal from the District Court of the United States for the Eastern District of Wisconsin; Ferdinand A. Geiger, Judge.
Before SPARKS and MAJOR, Circuit Judges, and BALTZELL, District Judge.
By this action appellant sought to recover damages from appellee and Gimbel Brothers, Inc., for infringement of his patent. The latter was sued as an infringing vendor of the accused device, and appellee was sued as a manufacturer of that device, and was alleged to be a contributory infringer, having a regular and established place of business in the Eastern District of Wisconsin. The marshal's return showed service on both defendants, and that upon Gimbel Brothers, Inc., is not questioned. Service upon appellee was attempted to be made upon P. G. Barton, and it was challenged.
The bill of complaint was filed on March 24, 1937. On April 9, 1937, appellee appeared specially and filed two affidavits, one by P. G. Barton, who for eighteen months last past, had been employed by appellee as sales representative on a commission basis, for the State of Wisconsin and upper Michigan; and the other by the first vice-president and general manager of appellee. The first affidavit, among other matters, stated that it was for use in support of a motion to quash service of subpoena and dismissal of said action as to appellee, and for no other purpose. The second affidavit, among other matters, stated " * * * which defendant (appellee) does not appear herein generally, but only specially for the express and sole purpose of having quashed the service of the subpoena heretofore issued herein against said defendant, * * * said defendant now respectfully comes to this court specially for the purpose of having said alleged service upon it quashed."
these affidavits were not traversed by appellant, and they established that appellee was a Delaware corporation, manufacturing dry shaving devices only in Stamford, Connecticut. The only office which it had outside of that city was an office maintained in Delaware pursuant to the requirements of th corporation laws of that state.
All orders for its goods, whether solicited in the State of Wisconsin or elsewhere, were subject to acceptance at the office in Stamford, Connecticut. The goods were shipped direct to the customer or on the customer's order. It was no part of the business of the solicitor to accept or collect payment for the goods thus ordered, and the Wisconsin solicitor, P. G. Barton, did not in fact collect the purchase price of goods for which he solicited orders.
the defendant, Schick Dry Shaver, Inc., maintained no stock of goods in Wisconsin and had no property of any kind whatsoever in that state, and did not, directly or indirectly, hold itself out as doing business there. It had no officers residing there. P. G. Barton personally maintained a service shop at his own expense, with his own employees, and repaired Schick Dry Shavers and sold parts therefor which he purchased outright from appellee. However, Schick Dry Shaver, Inc., had no interest in or control over said service or sale of parts.
Upon these affidavits and the motion of appellee's solicitors, who appeared specially for the sole purpose of moving to set aside the service of the subpoena upon it, the court ordered appellant to show cause why an order should not be entered setting aside and vacating the service of the subpoena and dismissing the action as to appellee.
In response to this order the parties appeared on April 10, 1937, appellee appearing specially as aforesaid, and the matter was argued and submitted. The court on the same day entered a decree granting appellee's motion, with leave to appellant to make application for an alias subpoena directed to appellee within twenty days, and providing in case of default thereof that the action be dismissed as to appellee. On May 4, 1937, the following decree was entered:
"The purported service of the plaintiff's Bill of Complaint upon Schick Dry Shaver, Inc., a corporation, one of the defendants above named, having been vacated and set aside by order of this Court, on motion of said defendant, who appeared by counsel specially for that purpose on the 10th day of April, 1937, and the period of twenty days allowed by the Court for proper service having elapsed without plaintiff having served the defendant, Schick Dry Shaver, Inc.,
"Now, Therefore, It Is Decreed that the above entitled action be and the same hereby is dismissed as to the defendant, Schick Dry Shaver, Inc., a corporation."
Appellant's assignments of error are based on the fact that appellee moved to dismiss the bill. On this premise he argues that by making such motion appellee entered a general appearance, waived any questions of venue, and admitted the truth of all material allegations of the bill. He further argues that in dismissing the action for lack of finding appellee, a substantial right of appellant was violated. We are unable to accede to either the premise or the conclusions.
Equity Rule 29, 28 U.S.C.A. following section 723, provides that every defense in point of law arising upon the face of the bill, whether for misjoinder, nonjoinder, or insufficiency of facts, which before might have been made by demurrer or plea, shall be made by motion to dismiss or in the answer. The same rule abolishes demurrers and pleas. Hence, since the adoption of the rule a motion to dismiss answers the purpose of the demurrer, with respect to matters covered by the rule. However, in performing the functions of a demurrer it will only reach such defects as appear upon the face of the bill, and it would not be proper to say that every motion to dismiss is the equivalent of a demurrer for want of facts. The defects upon which appellee relied were lack of service and lack of venue, and the facts which established those defects did not appear upon the face of the bill. Indeed, they controverted the marshal's return and appellant's allegations of venue. To present these questions, appellee quite properly entered its special appearance, and set forth facts under oath which fully established appellee's contentions, and these facts were never controverted by appellant. Moreover, they are not now controverted but they are sought to be avoided by the fact that appellee coupled its motion to set aside the service with its motion to dismiss for lack of venue, which motion it insists amounted to a general appearance and waived both service and venue. The record does not sustain ...