BRUSH ELECTRIC CO. BRUSH ELECTRIC CO. et al.
ELEGl'RIC IMP. Co. Oll' SAN JOSE.
(Oircuit Oourt, N. D. Oalifomfa. January 18, 1892.)
PATENTS FOR INVENTIONS-LJCENSE-RIGHTS 01' LJCENSEB.
A grant by the owner of a patent of an exclusive license to sen the patented. article carries with it an implied authority to sue in the owner's name, even agaIn" his will, for the bonafide purpose of preventin.'t infringement. Brush,.Swan Etet> trtc Light 00. v. Thomson-Hou8ton Electric 00., 48 Fed. Rep. 224, followed.
In Equity. Suit by Brush Ele<ltric Company. the California Electric Light Company, and the San'Jose Light & Power Company, and. others, against the Electric Improvement Company of San Jose, for infringenient of a patent. Heard on motion of the Brush Company to strike out its name as party plaintiff. Motion denied., Estee, .Wt"lson k McOutchen and Langh()'1"M k Miller, for California Electric Company. ' . ., ,i ' Lloyd &: Wood, Henry P. Bowie, and E. P. OoZe, for Brush. Company . Lov//,s T. Haggin, for defendant.· HAwLEY,District Judge, (orally.) This case was to me on a motion of the Brush Company to strike out its party plaintiff, beC'ause the bill had been filed withQut. its authority.or consent. A large number of affidavits were submitted on the motion; and a very extensive argument was presented by both sides. It appears that the Brush Electric Company, the owner of certain patented improvements in electric arc lamps, has had considerable litigation in .order to maintain its patent-rights in various statf;s of the Union, and. in a num1;>er Of the states its patent has been sustained.. After thesepra:ceedings in the courts, rival companies-the Thomson-Houston Electric Company-bought up a majority of the stock of the Brush Electric Company, and immediately stopped, or endeavored to stop, the litigation that was being conducted in different courts by parties who held the exc,lu!,!ive agency from the Brush Electric Company to sell its patented rights. ' I shall not attempt to make a statement of all the facts in this case. They are very novel, and somewhat complicated in many respects. I have carefully read over all of the affidavits, and have examined all the authorities that were cited by the respective counsel. It has been a serious question with me whether or not, under the affidavits that are presented, they do not show full authority and consent on the part of the Brush Electric Company to the California Electric Light Company, who holds an exclusive agency for the sale of the patented improvements of the Brush Electric Company, to bring this suit; It had given consent to bring several suits, and from the correspondence; as I have said, it is a very close question whether they have not given authority to bring any suits. It is unnecessary, however, to decide that matter. It is sufficient to say that I have. arrived at the conclusion that, whether the California Electric Light Company had express author-
ity to bring the suit or not, it certainly has. under the law, the implied autho,rity and powerto the sl,lit in order to mainta,in its rights, Since this motion was submitted, the same has been decided in the aircuWcourt of the district of Connecticut by Judge SHIPMAN, in a case the same as this.viz., Brush-Swan Electri.cLight Co. v.,J.t'JitrrMon-Houswn Electric Co., 48 Fed. Rep. 224, Electric Company had bought up the controlJn, the other COl'poTation, and spught to prevent litigation of the same character instituted here by the California Electric Light Company against the Electric Improvement Company of San, Jose. In a , discussion of. the legal questions involved, he says: ( "lflhelntetest of the 'owner, who has merely given his agent a license to
sell wit\lin "specified territory, and who is still the owner of thesubstalltial and important portion :of patE'nt, can 'be,. agaiDst his will, and without the and j,udioial deQree, there is that the power of the licensee will be wantonly exercised. On the other haud, it is reRINnab,lycertain,tha..t aUcenseecan, in an aotio11 at law, use the name:of ofth'tl'l>Rtent, (Wtlat1n' v. OM,akerin!l, 14 Fed. Rep. 917; Ooodyear v. McBurney, 3 BJatchf. 32; Sam.e v. Bish,op, 4 Blatchf. 438;) and it has also been declared with positiveness that a licensee of a patent cannot bring a suit in his own name, at law or in equity, for its infringement by a u. 486. 5 Sup.;Ct.RE'p. 2M.} In. this case Company is really a co-defendant, in view pf the Thomson-lfoliston Company's'coirtwlling ownllrship of the stock; but, being a resident of'Ohlo, it cannot be served with process as a CO-defendant in this suit.. I 'fhough it:Cllnnot becornpelled to eome'ilito court Rsa defendant, ·a court of ,eqUity lOOks at than fOf:m.,Whenit bas jurisdiction of the . relief,' ,"',here they, come ,as, · ,Iaintiffs or de. :parti. elJ ", i. t. gra nts .the, appro.p v. 21 Wall; 205.) and plllCes the III according to the 'real positions which they respectively occupy in the controversy. The (necessity of inaking the owner of the'patent a party in an action for infringe:ment is authoritatively declared in Waterman v. Makemt6, 13M U. S. 252-,11 Sup. Ct.. Rep. 33'4, as follows: ·In equity, as in law, when the transfer amounts to ,a license only, the title remains in the own61' of the patent, and suit must be brought in and never in the name of th,e licensee alone, ;unless that fS,necessary to prevent an absolute failure of justice, as the patentee is the'infringer, and cannot sue himself. ' In this case, it is true that the Cleveland Company iscaUed upon to attack the acts of its controlling 'owner, and, in a certain sense, to sue for its own infringement; yet the two corporations'are separnte,legal'cntities. One can sue the other,and it is not ,necessary for ,the licensee to'Sll,e lilone. in order to prevent an ab<lolute failure or justice., When the owner ls not the infringer, and therefore cannot be made a defendant, if the licensee is to ha.ve an opportunity to assert hiB,a1leged rights, he is at a great disadvantage, uideas he has the power of bringing a suit in eqUity in the name Qf the owner, though against his will. Inmy opinion, he has; p1'ima j'aoie, such an hnpIiedpower. , Whether a court of equity would permit a wanton or unjust or inequitable use of the name of the owner of: the patent by the licensee of the bare right. to sell within a limited territory isa question 'lVhich does not <\fIjrmatively arise, and upon which ' I express no,
There is no pretensecinrthis case that the California: Electric Light Company is making :8: !wanton, unjust, or inequitable use of the name of the Brush Eleetr'itl Company. On thebthel' hand, it clearly and affirma-
NO:PPLE V. DORN.
tively appears that it is libsolntelynecessary that it should have the power to bring this suit, in order to defend its rights, and protect its own interest, under the contracts made with it by the Brush Electric Company. Any other rule would, it seems to me, amount to a complete and absolute denial of justice, and no court would be justified, upon the facts in this case, in granting tbe motion. I think the opinion, from which I have read, is logical, sound, and just, and ought to prevail. Upon the authority of that case, and the authorities therein cited, which are the same as were cited to me on the oral argument, the motion will be denied,and it is so ordered.
NOPPLE fl. DORN.·
(Circuit Court, E. D. PennsJ/war.ia. December 20, 18llO.)
PATENTS POB INVENTIONS PATBNT. WHAT CONSTITUTBS INJ'BINGBMBNT CoNSTBUCTIOlf OJ'
The class of devices employing the same process for refining oil as the device " covered by complainant's letters patent "No. "411,646 was well known, and some of the prior devices of such class were substantially identical with complainant's device in result and moue of operation. The defendant's did not embrace all the specialdevices and combinations forming the elements of complainant's claims. Held that, on account of the state of the art, the pawnt must be construed st.rictly and specifically, and that the defendant's device did not
In Equity. Bill by Emil Nopple to enjoin Christian Dorn from infringing letters patent No. 411,646 for apparatus for refining oil. The answer set up non-infringement as sole defense. The first claim of defendant's patent was "an apparatus for refining oil and purifying oil consistinK of a tank, a receiving reservoir, in the upper part of snid tank, a horizontal plate said discharge pipe in 81tid plate, depending cylinders secured to said plate, forming chambers communiCating at alternaw ends, a heating pipe within said chambers, said parts Leing combined, substantially as de- . scribed." The elements in italics were containt'd in all complainant's device which was rnanufactul'ed und6l'letclaims but not in ters patent No. 427,421. Decree for respondent. CokisbuT]} ,k Shattuck, forcomplainsnt. Strawbridge,k Taylor, .for Iesponnent. BUTLER, District .Tudge. The plaintiff sues forinfringementof patfmt No. 411 ,646, covering "apparatus for refiningoil.". The answer denies infringement and this is the only question presented lind raised. A very few wQrds will explain all we need say respecting it. Apparatusfor and rt'!fining oil,and other liquids, by the.processemployed, are old. appears .from the history oftbe art as exhibited
Reported by Mark Wilks CoiIet, Esq., of the Philadelphia· bar.