HATCH V. HALL.
HATCH and others .". HALL.
(Oircuit Oourt, B. D. NetD York. April 26,1887.)
PATENTS FOR INVENTIONS-ASSIGNMENT-TERRITORIAL RIGHTs-INFRINGEMENT.
H., who owned the right, title, and interest in an invention secured by pat· ent for, to, and in the .state of New York, sold to defendant the exclusive right to make, use, and sell the patent in New York and Brooklyn, and "sell in the state of New York, and .elsewhere.» Defendant furnished goods of the patent to dealers to be sold outside, !md sought their custom for that purpose. Held an infringement by defendant, since sales by dealers.would be Infringements in which defendant participated, byfurn.jshing the mean$ for it, and by aiding and abetting it. . .
In Equity. Prank P. Prichard, for plaintiffs. B. F. Wat8on, for defendant. WHEELER, J. From the plea.dings and proofs it appears that one Claude L. Stillman, while the owner of reissued letters patent numbered 9,596, dated February 15, 1881, and granted to the orator William B. Hatch for improvements in spring bed bottoms, duly assigned to Nellie C. Hedley all his right, title, and interest in the invention secured by the patent, for, to, and in the state of New York, to be held and enjoyed by her during the term of the patent, "as fully and entirely as the same would have been held and enjoyed by" him "if this assignment and sale had not been made." This assignment was made and dated August 1, 1881. Stillman assigned to the orator Orilla L. Hatch, wife of William B., all his right, title, and interest in the patent, June 28, 1882. Nellie C. Hedley, on September 5, 1883, granted to the defendant, Hall, an exclusive license to make, use, and sell the patented improvement in the cities of New York and Brooklyn, "and sell in the state of New York,and elsewhere." The orators Hatch, April 1, 1884, granted to Elmer H. Grey, Joseph Hancock, and Tl'Uman H. Grey, the other orators, an exclusive license to make and sell the patented inventions in the states of Pennsylvania, New Jersey, Delaware, Maryland, Virginia, West Virginia, North Carolina, South Carolina, Florida, Alabama, Mississippi, Louisiana, Georgia, and Tennessee, and in the District of Columbia. All these conveyAnces and grants were duly entered of record in the patent-office. The defendant claims the right to sell in this territory by virtue of his grant from Hedley to sell in the state of New York and elsewhere. He claims that she acquired the right to make this grant to him by the force of the terms of the grant from Stillman to her, while he owned the patent; and by force of an arrangement with Mrs. Hatch and her husband while she owned it. He insists that, as Stillman was the owner of the patent, and had the right to sell the invention everywhere throughout the United States as well as in New York, his grant to her of the right for that state, to be held by her as fully as it would haveheen held by him if the grant had not been made, carried with it to
right to do whatever, out of New York, he could have done. His grant to her, however, was in tertns a gJ;'ant of the territorial right of that state. What was to be held by her as fully as he would have held it if he had not made the grant,was that right ; no more or less. These words appear to have been merely a confirmation to her of what had been by preceding words. They are' Buchas are frequently used in conveyanqes of land, and would not probably be thought to convey any right in any other lands than those conveyed, which the grantor might have. Arid the evidence fails toshdw .satisfaotorily that there was any arrangeSUfficiently .definite. and certain between Hatch.and Hedley for any right or interest in the patent,outside the written conveyances, to form the basis of any legal claim, even betwefln the parties themselves. Hedley instituted proceedings to protect the patent against infringers, which would inure to the benefit of Hatch, and it is probable that Hatch did give Hedley to understand'thatif the suits should be prosecuted, and the patent sustained, Hedley should have favorable consideration in dealing with the patent, and perhaps control of it. But there was no . definite agreementthat Hedley would prosecute the suits to any extent, and no other consideration moving between them. At most, it was merely a friendlyullderstanding, which either could drop at any time without incurring any liabIlity to the other. It falls short of anything that would affect the title to the patent, especially against persons without notice of it. Iron Wagon- Wheel 00. v. Iron Wagon 00., 20 Fed. Rep. 699. The defendant must stand upon his territorial rights, as they are shown by the record title to the patent. They furnish ample protection against the patent for making, selling, and using within the territory. In Adams v. Burke, 17 Wall. 453, it appears to have been held, against a strong dissent, that a purchaser from one having a territorial right, of an article for mere use, did not infringe against the owner of other territory by using it there. That case is, of course, to be followed here, so far as it went, while it stands. It leaves to tlie defendant the right to sell within territory for mere use outside. But it was carefully limited to what was necessary to be decided, and did not go beyond the mere use in question. It falls far short of holding that a purchaser from the owner of a territorial right, within the territory, could sell outside without infringing upon the rights of the owner of that territory. Sellers in the territory 9f the orators would appear to be infringers there, without reference to where they obtained the goods, if not from the orators. The defendant appears to have furnished beds of the patent to dealers, to be sold outside, and to have sought their custom for that purpose. They were infringers in making the sales,and he participated in the infringement by furnishing the means for it, and aiding and abetting it. Such a participant in the tort of infringement is liable for the whole. Rumford Chemical Work$..v. Hecker, 2 Ban. &A.351; Richardson v. Noyes, rd. 398; OottonTic SwpplyOo. v. Me Oready, 17 Blatchf. 291; Travers v. Beyer, 26 Fed. Rep. 450; Alabastine Co. v. Payne, 27 Fed. Rep. 559. Tha decision upon the motion for a preliminary inj unction in this case is relied upon for the defendant in support of a right.to sell for any pur-
IOWA BARB STEEL-WIRE
SOUTHERN BARBED-WIRE CO.
pose within his territory. ' The preliminary injunction was limited to restraint of sales outside of his territory. Hatch v. HaU, 22 Fed. Rep. 438. It was not held, however, that participating in such sales by others should not be likewise restrained. Such outside dealer was'held liable in Hatch v. Adoll1l.8, 22 Fed. Rep. 434, with refereuce to this same patent, and these same territorial rights. The defendant is now held liable for. aiding in the same thing. Let there be a decree for a perpetual injunction restraining the defendant from selling, and from selling to others for sale, in the territory of the orators, and for. an account of profits and damages, with costs.
IOWA BABB STEEL-WIRE CO. 'II. SOVTHERN BABBED-WlBECO.
(Oirc'Uit Oourt, B. D. Miuouri, B. D., April 22,1887.)
1.PATEl!I"1'8 POR INvENTIONS-LICENSE-OPTION CONTRACT.
In Equity. . . Rule upon John W. Gates, Alfred Clifford, and Charles H. Rowe, de:fendants in the above-entitled case, to show cause why they should not be committed for contempt in continuing to manufacture, as officers of the Southern Wire Company, wire adjudged by the court in this cause, to be an infringement of complainant's patent. The respondents answer that said wire company was licensed by the Washburn & Moen facturing Company and I. L. Ellwood, long prior to the decree in this case, to manufacture the wire adjudged to be an infringement of complainant's patent, and that respondents have manufactured the infringing article as officers of the Southern Wire Company, in the belief that said company was licensed to continue the manufacture of said wire during the time they manufactured it as its officers, by an option contract entered into between the complainant and said Washburn & Moen Manufacturing Company, whereby the former agreed for a valuable consideration, to sell the patent alleged to have been infringed by respondents, and assign all damages that might be recovered, to the Washburn & Moen Company for a sum specified, provided that com-