CURRAN 'V. ORAIG.
UURRAN 'V. CRAIG. 1
(Oircuit Oourt, E. D. Missouri. October 14, 1884.)
1. P ATENTS-LICENSE-RECEIVETt.
A license to construct and use a patented invention is personal to the licensee, and the receiver of a firm to which such a license has been granted, will not succeed to the firm's right.
2. LIABILITY OF RECEIVERS FOR UNLAWFULLY TAKING POSSESSION OF PROPERTY.
Where a demand against a receiver does not involve the administration of the trust committed to him, but arises from his having taken unlawful possession of property not included in the trust, a suit will lie against him personally as for a trespass, even though he took possession of such property under an order of COUl't.
PRACTICE-COMITY OF COURTS.
In sueh cases, where the receiver has acte') under an order of a state court in taking of the property, an application should he made to such court to correct its order befor(J r(Jsol'ting to an action of trespass on the case in a federal court.
If that cour8e is not followed, the federal court will suspend proceedings before it until the appEcation to the state court is made, in order to avoid a cOlltlict of jurisdiction.
Krum <1; .Jonas, for plaintiff. DyeT, Lee &; Ellis, for defendant. TREAT, J. This is an action on the case for an infringement of a patent, to which there is interposed a plea to the jurisdiction. To that plea a demurrer is filed. The plaintiffs conveyed to the copartnership of Hill, Nall & Uo. the right to construct and continually use two kilns or dry-houses named. Said copartnership constructed and used said kilns, and thereafter the circuit court of St. Louis, in a case pending before it, appointed the defendant a receiver for said copartnership, directing him to continue the business of the said :firm until further orders of that court, and to use all the machinery and appliances pertaining to the business of said firm, including the two kilns aforesaid. The defendant, under said order, has used said kilns accordingly. The defendant has operated said kilns only as receiver, pursuant to said order, and no leave of said court has been obtained to sue him therefor. This plea to the jurisdiction may be technically defective, inasmuch as it involves the merits of the case, as well as the jurisdiction of this court. Without disposing of the case on such narrow considerations, it may be well to determine the rights of the respective parties. The case of Oliver v. Rumford Chem. Works, 109 U. S. 75, S. C. 3 Sup. Ct.Rep. 61, apparently decides that a license is personal to the licensee, whereby an executor, administrator, or assignee, VOluntary or involuntary, does not succeed to the privilege of the grant. If that be so,
by Benj. F. Rex, E,q.. of the St. Louis bar.
the order of the state circuit court inoluding the two kilns in question was improvident. If the subjeot were undecided by the United States l:lUpreme court, it might be worthy of serious consideration whether, under the patent laws, there is not a clear and positive distinction between an assignment or conveyance of an exclusive interest in the patent, or a mere license to use a single patented machine. Thus, a patentee may accept or convey any portion of his interest for any specified district of country exclusively, which assignment or conveyance must be recorded in the patent-office. Does the section of the statute referred to cover a license to use a specified machine? Were the case to be determined irrespective of said decision of the United States supreme court, this court would hold otherwise. It is urged in the plea that the defendant is a receiver, acting under the orders of the state court, and consequently no suit can be maintained against him without leave of said court. It has been held by the supreme court, where the demand against said receiver does not involve the administration of the trust lawfully committed to him, but that he has taken unlawful possession of property not included in the trust, a suit .will lie against him personally as for a trespass. 'rhe doctrines involved in this proposition are considered in the cases of Hartell v. TilghmcLn, 99 U. S. 547, and Barton v. Barbour, 104 U. S. 126. The distinction is that where a receiver is sued as such, whereby the assets in his hands must respond to the judgment, permission to sue 'him must be first had of the court under which he is administering the assets intrusted to him. On the other hand, where he has taken possession of property not rightfully belonging to his trust in an administrative capacity, whether as United States marshal, sheriff, administrator, or otherwise, he is personally responsible for the trespass committed. While the ultimate rights of the parties have thus been considered, another question remains. Does not the comity of courts demand that an application should first be made to the state court, that may have made an improvident order, to correct the same, in order to avoid an unseemly conflict of jurisdiction, instead of resorting to the sharp process of an action of trespass on the case? Would not the state court protect its assignee by charging the estate with the damages resulting from its offioer's obedience to its orders? It seems to this court that the better practice would be for the plaintiffs to ask the state court to modify its order with regard to the two kilns in question. The defendant at present is an officer of the state court, and although not specifically named as such in plaintiffs' petition, he by the plea appears to be such an officer, acting innocently under the positive orders of that tribunal. In accordance with these views, this court withholds judgment on the demurrer until the plaintiffs make the suggested application to the state court for a modification of its order. Thus an unseemly conflict Clilll be avoided, and the rights of the respective parties preserved.
HAYDEN V. OBlENTAL
.HAYDEN V. ORIENTAL
(Oircuit Court, D.
I.land. October 9,1884.)
PATENTB FOR INVENTION-mFRINGEMENT-LIMITATION OJ!'
ACTIONS. As section 5599 of the United States Hevised Statutes saves all rights the same as if suit had been commenced before the repeal of the federal statute of limitations of July 8.1870, section 55 of that act applies to rights of action that were old enough at the time of its approval to have been fUlly barred by a state statute of limitations, if they had been sued upon, and if the state limitation had been pleaded, and held to be applicable.
BAME-OmGINAL TERM-EXTENDED PATENT.
Where a person sues for any infringement under the original term of 8 patent, he must briug his suit within six years after the expiration of that term; and when he sues for anything under the extended term, he must bring his suit within six years after the expiration of that extension.
At Law. Oscar Lapham and Geo. L. Roberts, for complainant. Sam'l Ames and Benj. F. Thurston, for defendants. COLT, J. The patent in suit was granted December 1, 1857, ex· tended in 1871, expiring in 1878. This suit was brought November 26, 1881. In a former opinion in this case (Hayden v. Oriental Mills, 15 FED. REP. 605) the court decided that under section 721 of the Revised Statutes the state statute of limitations is applicable to patent rights, in the absence of an express provision by congress on the subject. But the effect of the federal statute of limitations of July 8, 1870, (16 St. p. 206, § 55,) in connection with section 5599 of the Revised Statutes, upon the claims arising under this patent, was not determined, because not properly raised by defendant's plea. The defendant has now filed four pleas of the statute of limitations. The first covers any infringement between the date of the patent, in 1857, and July 8, 1870, the date of the enactment of the national law; the second covers the time between the passage of this law and its repeal, June 22, 1874; the third, the period since June 22, 1874; the fourth, the time between the grant of the patent and the date of the expiration of the original term, December 1, 1871. The present hearing was had upon the plaintiff's demurrers to the first, second, and fourth pleas. The act of July 8, 1870, section 55, provides that all causes of action shall be brought within the term for which letters patent shall be granted or extended, or within six years thereafter. By omission from the Revised Statutes, this part of the patent law was repealed June 22, 1874. But section 5599 of the Revised Statutes reserves all existing causes of action, so far as limitations are concerned, precisely as though no repeal had been made. Infringements committed prior to June 22, 1874, the date of the repeal, are therefore governed by the federal law. State statutes of limitation can never apply to any right of action under a patent, if that particular right is subject