a.nd others v. TWE and others.
(Circuit Oourt, S. D. N81J) York. November 17,1882.)
PATENTS FOR INVENTIONs-JURISDICTION-CONTRACT RIGHTS.
Where the validity and use of a patent are admitted, and the rights of the parties depend entirely upon a subsist,ing contract, the case is not one arising under the patent laws of the United States, and where the requisite diversity of citizenship between the parties does not exist, a circuit court of the United States has no jurisdiction.
F. H. Angier, for complainants. Kurzman ft Yeaman, for defendants. WALLACE, C. J. It must be held, upon the authority of Hartell v. Tilghman, 99 U. S. 547, that as the defendants admit the validity and use of the complainants' patent, and a subsisting contract is shown governing the rights of the parties in the use of the invention, the case is not one arising under the patent laws of the United States; ana the requisite diversity of citizenship between the parties not existing, this court has no jurisdiction. The license under which the defendants are alleged to uso the invention, by its express terms, precludes them from contesting the validity of the letters patent, and the controversy which the bill discloses turns wholly on the ':Jonstruction and effect of the agreement of license, and the rights of the parties depend altogether upon common law and equity principles. This conclusion renders it unnecessary to present at length the reasons which lead to the decision of the several other grounds of demurrer taken, but it will suffice, to prevent any misapprehension, to state1. I concur with the complainant as to the construction of the condition of the defendants' license, and am of opinion that the patentee' had the right to reserve from the operation of the license additional territory; and that, as the patentee, by the terms of her agreement with the complainants, could license no person without their consent, any reservation made by her out of the defendants' territory would inure to the complainants 1:>.y way of an equitable estoppel. 2. The agreement between the patentee and the complainants did not transfer to the latter the legal title to the patent, and the patentee should therefore have been made a party to the suit. 3. The Dale Tile Manufacturing Company have no community of interest with the other complainants. Their interest in the subjectmatter of the controversy is distinct from that of the other complain-
UNION8TONE CO. 'V. ALLEN.
ants, because derived from the patentee by an independent license. The fact that this license was granted by the patentee to the Dale of the other comTile Manufacturing Company with the plainants, does not alter the character of the respective inte.rests of the parties in the subject-matter. There is, ,therefore, a misjoinder of parties complainant. The demurrer is allowed.
see s. O. (lnte, 297.
Circuit Court, E. D. Pennsylvania. November 17,1882.)
PATENTS-IMPROVEMENT UPON FOlUOllR INVENTION-INFRINGEMENT.
An addition, even though an improvement, made to a patented invention, does not confer upon a subsequent patentee the right to use the device described in the former patent.
The patent (No. 102,218) for oil-stone holders is infringed by the patent (No. 224,970,) for hand tools for dressing millstoneR, even though the latter may be an improvement upon the former by the addItion of a bar bacJt of the stone.
In Equity. Hearing on bill, answer, and proofs. isBill to restrain an alleged infringement of patent No. sued April 26, 1870, to Brown, for an improvement in oil· stone holders, assigned to complainant. Respondents denied that complainant's patent possessed any patentable novelty over the wellknown joiners' and carpenters' bench vise, and also denied the alleged infringement, and alleged that Me device made and, sold by respondents was constructed under letters patent No. 224,970, issued February 24, 1880, to William L. Tetter, one of the respondents, for an improvement in hand tools for dressing millstones, whieh, they claimed, did not include the "pointed feet" described in complaiml.nt's patent, and was further distinguished by having a detachable handle and also a solid-metal plate between and in contact with the block and the clamping-rod. George E. Betton, for complainant. Joseph P. Gross, for respondents.
4IReported by A,lbert B. Guilbert, Esq., of the Philaaelphla bar.