MONTGOMERY PALACE STOCK-CAR CO. V. STREET STABLE-CAR LINE.
in a strict sense a proceeding in 1'em is one taken directly against property, and has for its objert the disposition of the property without reference to the title of individual claimants; but, in a larger and more general sense, the terms a1'e applied to actions between parties where the direct object is to reach and dispose of property owned by them or of some interest therein. Such are commenced by attachment against the property of debtors, or instituted to partition real estate, foreclose a mortgage, or enforce a lien. So far as they affect property in the state they are substantially proceedings in 1'em, in the broader sellse which we have mentioned." The principle of these cases, in my opinion, sustains jurisdiction here to the extent, at least, of settling the rights of the parties in respect' to the real property in question. The motion to dismiss the suit is de"nied.
MONTGOMERY PALACE STOCK-CAR Co. V. STREET STABLE-CAR
(Circuit Court, N. D. lllinotB. April 14, 1890,)
.Where a is brought to determine tbe ownership of .patents assigned to defendants, but which plaintiff claims under a contract by the patentee that all ented iniprovements on former Patents granted him, as those in suit are alleged to be, shall belong to the corporation under whom plaintiff claims, and both partiell are citizens of the same the United States circuit court bas no jurisdiction.
In Equity. A,lfred Moore, for complainant. J. J.McClellan andH'est &: Bond, for defendant. '
BLODliET'I,', J. This caSe is now before the ceurt on Q' demurrer, both general alid special, to the bill. The essential facts, as stated in the bill, are these: On the 25th of August, 1870, one John W, Street was the owner of patents Nos: 96,362, and 96,500, which had been issued less than a year previously for improvements in stock-cars, and on that day he made an.agreement with 18 oth3r persons for the formation of a corporation under the laws of Illinois to be' called the "Street Palace Stock-Car to utilize the said' patents by the construction and running of car" made in accordance therewith. The agreement related mainly to the amount of capital stock of the company, and the bution thereof among the parties to the contract and otherwise; but the only clause. in the contract material to the purposes of this case is the folloWing: ' , "It is further understood and agreed t,hat any inventions orimprovemeilts, to be applied as an improvement to the above-named cattle-car, heretofore or hereafter oHginatedor developed by any mt-'mber of said company, being patentable, shall be patented in the name and for the benefit of. the . . aforesaid company." The bill avers the subsequent formation of the said Street Palace Stock.-CarCompany under the laws of Illinois, and its entry upon busi:.
duly assigned to 'the company. It is further charged that in October, 1872,said company became finanCially embarrassed, and 'such steps 'were sUbsequently taken as that all the rights, property,frapchises,apd patents of the company were assigned to the McNairy :Man,lllfwturing Company of Cleveland, Ohio, and, by a, serj.es ,of plesne, CQllveyances, these assets be,came vested in the complainant, a corporation organized under the laws of Illinois. 'It is further charged that in FebruarY,1885, patents Nos. 336,372 and 336,373 were ,duly issued to tbcesaidJobn W.,Street and one S. M. Fischer .for improvements in stock-cars; that, after the issue of the two na,medpll,ten41, ,Fiscber"j;,ecured the qrganization of the defendant corporation under the laws of Illinois, and ever since that, time the defendant company has constructed and used cars made in accordance with said patents Nos. 96,362 and 96,500, owned by complainant, and the two last-named patents, whereby the defendant company has made large profits, for w;bich lJ,n accounting fs prayed ,by th,e bill. It ''\Viii' be' noticed that botll 'complainant and defendiult corporations are organized under thelaws.of IllinQis"and are citizens orsaid state. This COllrt, therefore, has rio jurisdiction, unless such jurisdiction arises from the subject-matter of the controversy stated in the bill. '/As'tothe claim for atiaccounting for the allegednse of the entsowned'byStreet, in 1870, those patents both expired,-one in 1886,and the and, under the,rulingof the supreme court in Root v: Railway Co:, 105 'tr. S. 189, that equity has no jurisdiction in suits for infringement of patents unless a case is shown entitling the complainant to an injunction part of his remedy, it is Illanifest that there is no for, e9uitabl,e to, the fringement of these two old patents, as complainant's remedy in that ,IDllst b,e acourtoflaw. Thl'l ease made by the bill ,two .qf february, 1885,' is under'the clause. I have from the contract of August 25, 1870"between Street and aS$ociates, as the owner ,or' the rights, property, 'franchises, and of ihe.Street Palace is" e#titIed to the two patents as the inventions of street.. The controversyJn .to these two last-named patents, then',' is not as .to, WeconstructiQn, validity, or infringen)'ent of these two patents, ,but is controversy t'he ownership of not upon any laws of, tJie United States, but UpOIl general o(equIW' growing out oithe contracts set out hi the bill. by virtue of complainant claim,S title. ,I.n Wilson v. Sanaford, 10 How. 99, this question was considered, and Chief Justice TANEY:, speaking for the l,CO!1rt,. said: ' I i ' '.'
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'''N.ow the dispute does not arise under congress, constrnctioh,of' any Iaw'i'tfrelation to nor patehts. It' arises olit' of the contract'stated in the bill; and there isno act of congress providing for or regUlating contracts of this kind. Therights of the' parties depend altdgether.upo.nt"comrilon"law and equity principlea. The 1Ule bill istQ ,llllo v;e' tMs I !lOll tl'.act, set iWde, .and to be for-
JOHNSON RAILROAD SIGNAL
& SIGNAL 00.
(eited:and the prayer is · that tbe lIppemmi's reinvestiture of mie' 'to Uce,nse granted to the appellees, ,by reason of ,the forfeiture of the contract. may be sanctioned by the court.' and for an the injunction he asks for is to be the consequence of the decree of thecourt sanctioning the forfeiture. He allegt's no ground for an iIijunction unless thecontraet is set aside; and, if the case made in the bill was alit one for relief in equity. it ilJ very clear that whether the contract ought to be declared, forfeited or not, in a court of. chancery, depended altogether upon the rules and principles of equity. lind in no degree whatever upon any act of congress concerning patent-rights." ' This opinion has been affirmed in Hartellv. Tilghman, 99 U. S. 547, and ill Al1Jright v. Teas, 106 U. S. 613, iSup. Ct. Rep. 550. See, also, Burr v. Gregory, 2 Paine, 426. This, then, being, as to the two patents of February, 1885, a controversy wholly between parties who are citizens of the state of Illinois, in regard to the effect of a contract, this cou;rt has no jurisdiction to hear and determine it. Taking this view of the question of jurisdiction it would not be proper for this court to exp!eBS any opinion as to the merits of the case, which have been elaborately discussed in the briefs of the ,cOunsel. ' The demurrer is and the bill dismissed for want of jurisdiction.
'D. UNION SWITCH
(CirC1J,it Court, W. D.
1. · .. .
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Anotiginal bill was'foi' the infringement' of letters patent relating to electrio signals. granted to FrederiokChll,eswright, assignee of William R.' Sykes.. In a CrOBI!" bill the I?lainti1f therein set up, amoUg otheJ," things, an exclusive right t<>: t,he term "The Sykes System " as a trade mark or name designating a system of eleotric signal!!, and sought right. Held, that this was new and distinCt matter not within tbescope of the. bUl, and, must be strioken out. . 2. S.UIE-SBRVlOE OF CnoBs-BIU..-NoN'-RESIDENT PLAINTIFF. ,When the plaintiff in the original bill is a oorporation ot another state, an'd has tio agent or representative in the judioial,distriPt where the suit is pending, other t,han its solicitor in the suit, an drder will be made for substituted· service, as. 1'6!!pe01;8' 1ihe cross-bUl, upon such solicitor." , .
InEquity. '.Motion for leave to file cl;oss-bill, and for an order for sttb- ; . ,. George H. Ohristy, for the motion. William S. Pier, contra.
I " .
ACHESON, J. 1. I am of the opinion that the cross-bill, as presented the well-settled rule which forbids the introto the court, offends duction into such a bill of any new and distinct matter not within the scope of the original bill. Cross v. De Valle, 1 Wall. 1, 14. Here, the snbject-matter of the original bill is the patent No. 241,246 granted to Frederick Cheeswright, assignee of William R. Sykes, with the infringement of' which the bill charges the defendant. But the cross-bill, among