NELLIS V. PENNOCK MANUF'a 00.
An injunction is a preventive remedy, having reference to the future rather than the past. The complainants not being entitled to one in this case, and the provisions of the patent law giving to one to whom has been assigned an interest in the damages for .past infringement, as incidental to the transfer of the legal title; the remedy of an action on the case, I am of the opinion that this court in equity has no jurisdiction; that the interlocutory decree heretofore entered must be opened and the bill of complaint dismissed; but, under the circumstances, without costs to the defendant.
(August 16, 1882.)
On Motion for NIXON, D. J. This cause having come on to be heard upon an order granted for a rehearing, based upon the petition of defendant, verified May 28, 1882; and upon the bill of complaint, filed June 2, 1879; the amendment to said bill, filed August 26, 1879; the answer Company; thereto of the defendant, the Domestic the replication of the complainant, and the proofs, oral, documentary, and written, taken and filed in said cause, and having argued and submitted by counsel for the respective parties: Now, therefore, on consideration thereof, it is ordered that the interlocutory decree,' heretofore entered, be opened and the bill of complaint dismissed without cost to defendant; and now, on motion of John Dane, Jr., Esq., counsel for tHe defendant, the court doth hereby order, adjudge, and decree that the complainants' said bill of complaint be, . and the same hereby is dismissed, without cost to defendant.
(fJircuit Court, E. D. Pennsylvania.
August 1, 1882.)
PATENT-INCLUSION Oll' SEVERAL PATENTS IN SAME: SUIT,
Claims for infringement of several patents maybe included in one suit where the subjects of the patents are correlative, and all the inventions covered by them are embodied in the same infringing machine.
2. SAME-AsSIGNMENT-RIGHT Oll' AssIGNEE TO SUE IN HIS OWN NAME.
An assignment of "the exclusive right to manufacture and sell my invention in the United States to the full end of the term for which said letters were
-Reported by Frank P. Prichard, Esq., of the Philadelphia bu.
granted." vests in the assignee the entire monopbly in the patent throughout the United States, and he may bring an action in his own name for an infringement.
SAME-LICENSE-PARTIES TO SUIT.
The grant by such assignee to a third person of the exclusive right to manufacture and sell a particular machine containing improvements covered by the patent is onlyI' license, the licensee is not a necessary party to the suit for infringell).ent. .
SAME-VALmrrY OF PATENT.
Reissued patents Nos. 2,429, for improvement in hay elevators, and 2,260, for improvement in horse hay forks, and original patent No. 63,34:;, for improvement in horse hay forks, held valid.
Bill in Equity for an injunction against the infringement of certain patents. The facts are sufficiently stated in the OpllllOil. Bakewell <t Kerr, for complainant. Henry Baldwin, Jr., for respondents. MOKENNAN, C. J. On the eighteenth day of December, 1866, letters patent No. 2,429, for "improvement in hay elevators," were reissued to Edward L. Walker; on the twenty-ninth of May, 1866, reissued letters patent for "improvement in horse hay forks" were granted to Seymour Rogers, No. 2,260; and on the twentieth of March, 1866, letters patent No. 53,345, for "improvement in horse hay forks," were granted to Seymour Rogers. The title to these several patents is alleged to be vested in the complaina;nt, and they constitute the subjects of the present controversy. The bill allege's that the inventions described and claimed in these several patents "ate susceptible of connected use in practical in the construct'ion of horse hay forks," and that they are embodied and contained in hay forks manufactured,used, and sold by said respondent, in violation of the exclusive rights 'of complainant. With this averment in the bill, it is not demurrable for multifariousness. The inclusion of several patents in the same suit, where their subjects are correlative, and the inventions claimed are embodied in the same infringing machine, has been more than once sanctioned by the highest authority. Nourse v. Allen,· 3 Fish. 65; Seymour v. Osborne, 11 Wall. 516, 559; Bates v. Cae, 15 O. G. 342. In Scymourv. Osborne Mr. Justice Clifford says "that as all the patents sued upon refer to the same general subject, and are all embodied in the machines manufactured by the defendant, the objection, if it had been made, could not have been sustained." The demurrer for this cause is therefore overruled. The complainant's title to the patents in question is denied in the answer, and it is insisted that the proofs do not establish his right
PENNOCK MANUp'a 00.
to maintain this suit. Patents No. 2,260 and 53,345 seem to have been regularly assigned to the complainant, in terms which'ves.t in him the entire interest in these patents, and therefore his right 'to sue on them is unquestionable; but Walker's assignment of his original letters, which were succeeded by reissue 2,429, is claimed to be so restricted as to constitute the complainant only a licensee, and so to disable him from suing in his own name. That assignment Edward is dated February 20, 1865, and, after reciting the grant L. Walker of letters patent No. 44,129, assigns to "D. B. Rogers & Sons, of Pittsburgh, Pa., and their legal representatives, the exclusive right to manufacture and sell my invention in the Uniteq States to the full end of the term for which said letters were granted," and is duly executed by Walker, and recorded in the patent-office. There can be no doubt that this conveyed to the' assignees the entire right to manufacture and sell the invention throughotItthe United States, to the exclusion of the patentee as well afi' all others. They were' invested with the monopoly of manufacture 'and sale, and, so far as these two incidents of the franchise are inv.olved, nothing whatever remained in the patentee. What interest, then, had he upon which he could maintain a suit for a violation of either of these rights? And why could not the party who alone is entitled to protection, invoke directly the powers of a court of equity for that purpose? Even in an action at law, in which the plaintiff must be invested with the legal title to the patent, it was held by Mr. Justice Story that "where a grant was made of a right to construct and 50 machines within certain localities, "reserving to the grantor the right to construct, and to license others to construct, but not to use them therein, the grant was of an exclusive right, under the act of 1836, in regard to patents, and that suits were to be brought in the "The action for the violaname of the assignees;" the judge tion of an exclusive right is confined to the owner' of such right." Washbum v. Gould, 3 Story, 122. But if this is not so, I think the entire monopoly in the patent is vested in the .complainant. He has the exclusive right to manufacture and sell; and this carries with it the right to use the machines sold. To the extent to which the entee transferred the !'ight to make and sell his invention, he parted with the monopoly of its use, and authorized its use by those who had become lawful purchasers of it. But he had parted with his entire right to manufacture and sell, so that, necessarily, he could not sell to others to use, and no part of the monopoly remained in him. The complainant alone has the right to sell, and as it would
practically be nugatory without the right to use the maohines sold, all that is essential to its full ex.eroise and enjoyment must be taken to have been. intended by the parties to pass with it; and nothing short of an express qualification will change this result. See Blo01ner v. Millinger, 1 Wall. 840. Suoh was the praotioal construotion put upon the instrument by thep!1>rties to it. After the reissue of the original patent, to which the assignment referred to applied, to-wit, on the twenty-sixth of January, 1867,another assignment to D. B. Rogers & Sons was exeouted by Walker, in whioh the following is the granting olause:
.. And do confirm to them and their legal representatives, without further fee or payment, and without liability to forfeiture, all and every right to manufacture, sell, and use, and vend to others the rightto manufacture, sell, and use, hay elevators under the aforesaid letters patent, and pursuant to the aforesaid assignments! dated the twentieth day of February, A. D. 1865. as fully and entirely to all intents and purposes as if the said agreement of the same date had not been made and executed; together with the same rights, powers, and privileges in the said invention and improvements, under the reissue of the said letters patent, that has been or may be obtained."
It is true that the teohnioal import of this instrument is to release Rogers & Sons from liability assumed by them by an agreement of even date with the original assignment, and to nullify the effect of that agreement upon the rights conveyed by the assignment; but it cannot be conceived that the assignor would "confirm" to his assignees the right "to use, and to vend to others to use," his invention, if he had not intended, and did not intend, to part with it, and unless it was understood and believed that a transfer of such right was comprehended by the previous assignment. In addition to the "confirmation" of the rights to "manufacture, sell, and use, and vend to others to use," the invention, these "same rights" in the invention, under the reissue then obtained, or to be obtained, are also conveyed. So that in every aspeot of the question it seems to me that these instruments are to be taken as intended by entire interest of the assignor the parties to vest in the assignees in the patent. And when the parties have so expounded their contracts, it is out of place for an entire stranger to them to seek to circumscribe their scope by a technical limitation of the spirit and sense which the parties have impressed upon them. It is further alleged that Wheeler, Melick & Co. have such an interest in one of the patents in controversy that they are necessary parties to any suit founded upon it. On the twenty-eighth day of
NELLIS V. PE:SNOCK MANUF'a 00.
June, 1867, D. B. Rogers & Sons, then owning the Walker patent, made an agreement with Wheeler, Melick&r:Co., by which they granted to the latter "the exclusive right under said recited letters patent to manufacture and sell s. certain hay elevator, which has a movable point, which also serves as and performs the f\Wctions prongs or barbs to sustain the hay." This is not an, assignment of an exclusive interest in the 'entire monopoly for the whole or any portion of the United States. It is a license orily 'to 'manufacture and sell exclusively a specified form of hay elevator, covered by the Walker patent, the beneficial ownership of it as to allotber ,form,. of ,hay It forks, and the legal title to it, remaining in D,.l3. Roger!! &, is in terms defined as a license in. this and its character as such is conQlusively apparellt from other agreemeI\ta, same parties, which h!Lve made part of the,',e,viq.ence. ,UIldet all the decisions, the representatives of suchan interest are not indispensable parties to a suit upon the Nor lJ.re they. even proper parties here, because the decree askedJ()r will not affect their of this suit,ry· interests;' ahd. 'they have, since' the leased to the complainants all rights and interest which, they might have under the patents in suit. ' I do not propose, to assume the labor of discusi>ing in detail the various defenses set up by the respondent. This opinion is ciently extended. It is only necessary to say that these defenses, and the argument in enforcement of them, have' fuiledto convince me that thecomplainanfought not to have the relief which he seeks. and 2,260, I am of opinion (1) that reissued patents and original' patent No. 53,345, are valid, and that they have been severally duly assigned to the complainant; (2) that the respond. ent, in the hay elevator exhibited in evidence e.nd manufactured and sold by it, is shown to have infringed the first claim of No. 2,429, the first and second claims of No. 2,260, and the claim of 53,.!J45. A decree will accordingly be entered in favor of the complainant, with costs, and for a reference to a master to ascertain damages and profits.
LULL v. CLARK and others.
(Circuit Court, N. D. New York. 1882.)
PA.TENTS FOR INVEN1'IONS-FoRMA.L VARUTION-IliFRINGEMENT.
Where the mechanism used by defendant's shutter hinge is & merl' variation from that of plaintiffs' invention, having the same mode \1.1. it is an infringement of the patent.
Livingston Gifford, and Philip J. O'Reilly, for plaintiff. George J. Sicard, for defendants.
Justice. This suit is brought on letters patent No. 10,477, granted to Harvey Lull and Richard Porter, on the invention of Lull, January 81, 1854, for 14 years from January 2, 1854, for an "improvement in shutter hinges," extended for seven years 'from January 2,1868, and "again extended for seven years from April 29, 1876, under the provisions of a special act of congress approved on that day. The specification says:
.. Figure 1 represents the hinge as opened and locked; figure 2 represents the hinge in its position when the shutter is drawn from the wall sufficiently far to unlock it; and figure 3 represents the hinge when the shutter is closed. There are several varieties of shutter and door hinges, the greater portion of which, in being opened, bring two inclined planes in action, causing the shutter or door to rise, the object being to cause doors especially to swing clear of the carpet. Some of these are provided with a fastening which is formed of a separate piece. Another method is to make a series of planes, which admits of the door rising and falling several times in the act of swinging it open and shut. I do not lay claim to any of these hinges, for they are almost useless for shutter hinges, for which purpose my hinge is especially designed. It is well known that window shutters must swing into the frames several inches before they come to their seats, and to use either of the class of hinges before mentioned would cause the shutter to rise up against the frame and bind, or else it must be cut away, which would admit rain, snow, etc. My hinge allows the shutter to swing around horizontally until it almost reaches the wall, when it drops and locks. This is one distinguishing feature of mine over other hinges. Again, my hinge is c<1mposed of but two pieces, each entirely of cast metal, while the others which are self-locking are composed of three or more; and, indeed, many of those which work upon the planes use a friction roller to aid in causing one half of the hinge to rise on the other half, which is expensive and very liable to become disarranged, as well as adding another piece to the hinge. This constitutes a second difference. B.ut the most essential point of difference between my hinge and those heretofore essayed consists in my being able Lo use a cast-iron spindle with