Opinion
March 28, 1917.
J. Ralph Ulsh and August Becker, for the appellant.
Clarence R. Runals and Robert J. Summers, for the respondents.
The rule is well settled that a stay of proceedings in an action will not be granted upon the ground that a prior action is pending between the same parties in reference to the same subject-matter, where it appears that, whatever be the result of the prior action, a trial of the second action will be necessary. If only a portion of the questions involved in the second cause of action will be settled in the first action, a stay will not be granted. ( Clark v. Vilas Nat. Bank, 22 App. Div. 605; Dolbeer v. Stout, 139 N.Y. 486.)
The matter relating to the infringement is set up as a partial defense. Even though the infringement is established in the suit pending in the Federal court, it will not be decisive of this action. Under such circumstances a stay should not be granted. What bearing the question of infringement may have and to what extent the question may be tried in this action, can better be determined when all the facts are before the court.
In Pratt v. Paris Gas Light Coke Co. ( 168 U.S. 255) it was held as stated in the head note that "When a State court has jurisdiction both of the parties and the subject-matter as set forth in the declaration, it cannot be ousted of such jurisdiction by the fact that, incidentally to his defense, the defendant claims the invalidity of a certain patent." (See, also, Wise v. Tube Bending Machine Co., 194 N.Y. 272, 278; Pratt v. Hawes, 118 Wis. 603; David v. Park, 103 Mass. 501.)
The order should be reversed, with ten dollars costs and disbursements, and the application for a stay denied, with ten dollars costs.
All concurred.
Order reversed, with ten dollars costs and disbursements, and motion denied, with ten dollars costs.