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Q,01f'ft. D. Indian".
and tnellieenlleewbOi1f8 Ueel!lse conveyslllJ!, exc!usiV(I'1nonOpOly.' i , : j'.,.... ,': ,': , ' " ,:;, A liollDse ito manufalltl1rei\me, glass chimnE\Ys under a, patent, by the patehj;ee, with "otliers;ao,1l8 J1dt"estoP th,.e licensee, fro. m, bbJec,ting that SUCh, other: . partiea cannot be paf,eJ;ltee rlll' an ItCtion ,against the licensee for in
Where, in a joint complaint by two or more parties. the facts stated do not show ., ':. ofa,ctlon in, them. a demurrer., On thegr0ll,u!i th,at thec()mplaint does " not'state' facts sufficient to Qon,titute a cause of action; m:ust 'be sustained·
".'!h JEquity. Suit by George W.131air and! said .', :Bla.irassociatedwith' PaliIZiIrttDhatt,pa:rtl'lersaa Dithridge &Co.,agairist the Lippincott Glass Company, apatent.iHeard on demurrer to" bill. ' Dernurrer'sustained. . , . " W.-Bdkewelt &rSi>naand W. A. Van Buren, for complainants:lihtnk O. Lovelatnd, ,4hr defendants.' .
,,]hedemurrer of the ,respondent to the complainants! 'of<lomplaint'/presellts the sole question in ;this case. The sufficiency. of the COplpllliIitl'hinges()n the question whether a suit in equity for the infringement ,OL.a patent right is maintainable jointly by the patentee and alioens6e, whose license, no exclusive monopoly. An exclusive license, to ,the extentof the interest gran"ted, is construed to bean! 'equitable assignment,andclotqes:. the licensee with an interest, ;1RJ1J·mvdo, in ,the monopoly. ":The which can carry ,the monopoly isthat ,of 'an!exclusiva right. or of an undivided interest in the exclusive right to practice ,the invention, including theexclusi¥e right to make, thEiexclusive right to use, and: the to sell,the patented invention;'l ' · The inventor ofa new and usef\lHmjlrnvementhas no exclusiv.e right to it until ,he obtains a patent. This right is created by, tae statute and seClared by the patent, and, no suit ,call :b&maintained ,by, the: inventor against anyone for using it bef.ore,theipatent is issued. The ldisoo;v,orer has a mere inchoate .stat-. utoryrignt, waiah he may perfect and :make absolQW by proceeding in the m8JIlI16l'w.hich.theJawpr,.esori:bes.: ,Beevea v.Corning, 51 Fed. Rep. 774. The monopoly secured to the patentee if:h:fQl" one entire thing. It is the right of makioDgjusing, awv.ending tootbel!Sto be used,the improvement he has invented, and for which the": patent is granted, to the exclusion of all others. The monopoly did not exist at common law, and the rights which may be exercised under it must be regulated by the law of its creation. It is created by the act of congress, and no rights can be acquired in it unless' authorized by statute, and in the manner therein prescribed. Gayler v. Wilder, 10 How. 477. The stat-
BrJl1'R '",: LIpPINC01Vt GtASSOO.
ute provides that a patentEiemay assign the whole':or' any interest in the monopoly. Rev, St. U. S.1878, § 4898'- A sait may be maintained for the infringement of a patent in the name of the party inter.;. ested either as patenh'e, assignee. or grantee; ld. §4919. But, to enable the assignee to sue )alone, the assignment must undoubtedly ,convey to hlm the exclusivel11onopoly which the pa.tentee held in the teN ritory'specified, to the exclusion of the patentee and To enable hiirdb sue jointly with thepatetltee, the assignmentmust convey to him an ,undivided part of the monopoly in :the territory where the infringement occurs. Any assignment short of this'is a mere license; It has been' well' said that it was' not the intention of congress to mit several nionopolies to be'made but of one, and to be divided among different persons within the same limits. Such a division would inevitably lead to fraudulent impositions' upon persons, who desired to purchase the use of the improvement, and would subject a party who, under a mistake as to his rights, used the invention without authority, to be harassed by a multiplicity of suits instead of one, and to successive recoveries of damages by different persons holding different portions of a patent right in the same place. It has been uniformly held that a patentee and an exclusive licensee may' join in bringing a bill to restrain an infringement of the patent right. The reason is that the exclusive licensee either owns the monopolY"or an undivided 'Interest therein, within the territory specified, 80 that such license is tantamount to an assignment. It is different · with a simple licensee. He has no exclusive right in any particular territory. The patentee may grant licenses at will to others. A simple licenseamoilnts merely to a waiver by the patentee of his right to the exclusive' enjoyment of his monopoly in favor of such licensee. He acquires no exclusive right in the monopoly, within any specified territory. The patentee may, without infringing the rights of a simple licensee, grant licenses to others; or, if the patentee chooses, he may permit others to enjoy the patent right without license. If the patentee chooses to permit others to practice his invention without license, the simple licensee has no legal ground for complaint or interference. Sewing-Mach. Co. v. Sloat, 2 Fish. Pat. Cas. 112; Wyeth v. Stone, 1 Story, 275; Gayler v. Wilder, 10 How, 477; Nelson v. McMann, 16 Blatchf. 139; Hill v. Whitcomb, 1 Holmes, 317; Ingalls v. Tice, 22 O. G. 2160, 1.4 Fed. Rep. 297; ./Jird$ell v. Shaliol, 112 U. S. 485, 5 Sup. Ct. Rep. 244. . Language is used by the learned justice who delivered the opinion in the case of Birdsell v. Shaliol, BUp1'a, which might, OD a casual reading, be thought broad enough to justify the maintenance of a joint bill by the patentee and a simple licensee.. 'He says: "A suit in equity may be brought by the patentee and licensee togetherj" citillg Gayler v. Wilder, supra, and Littlefield v. Perry, 21 Wall. 205. The language must be construed as applicable to the license then under consideration. .The opinion shows' that the judge was speaking about "an exclusive oral license." It mustQe deemed settled, bot4 upon principle and author
ity ,a simple licensee bas no sucb interest as to make him either a necessary or proper party to a bill filed to. restrain. the infringement of a patent mght. It is, urged, if the lilw be as stated,that it may be gathered from tbebill that the license in question was an exclusive. one. It suffices to say that a careful consideration of the averments of the complaint precludes.any.such construction. Th.EI complaint fails to show that the plUtiesjoined as .plaintLtfs with the paten.tee have any excIusive interest in the monopoly. It, ill insisted; iIJasmuch as it is Il.ll(lged in the bill respondent has been granted by the complainants a license to tbat manufacture lime glass chimneys, that it is estopped, to say that they may not maintain a joint bill against it for manufacturing lead glass without a: license. The respondent, if estopped at all, cannot be,estQpped beyond its license. !tma, be that Dithridge & Co. have acquired such an exclusive right inthe patented invention, so far as relatea,totbe manufacture of lime glass chimneys, that the patentee could not grant to the respondent a license to manufa.cture that sort of glass chimneys,without his licensees joining in it. This concession, however, would by no means prove that Dithridge & Co. had f!.n exclusive license for the manufacture ofleadglass chimneys. Dithridge & Co. are not shown hy,the bill to baveaoquired, either by assignment orlicense, any to practice the invention in the ,mllnufacture of lead glaas;ch4nneys. I have, carefully examined all the caSIlS cited by complaiQlliutB'CQunsel, !Lnd I ,tind none which lend support to the complaint.: a joint one by two one of whom' halil: no inter.est, it follows that the qemurrer must :besustained. When two or JIMre plaintiffs unite in bringing a" joint, action, and the facts stated, .Qo.. DQtshQW a :joint of action in them, a demurrer will lie upon th$! ground thatdQ,complaint does not state facts sufficient to cause. of ..ctiQIl. Ha,rris v; Harris, 61, Ind. 117, on page C()unlle! is so advised, within ,20 129. .XQe . bill may days,'lij>QIil paymeJ;l..tofiillicosts, to and including the filing of the otherwiae, at. ,the expiration of 20days,the bill shall with CQsts, but withot;t prejudi(le.
A1IllllU0A..1!f HEAT INsUUTINGCo., Limited, ee at.
(otrcuit· Court 0/
October 20, 1892.)
.. , Lettel'llpateht No. 17j,425. iesued December' 21, 1875, to'John C. Reed. for a non· llOuducting.covedng:f,,-r .steam, and other pipes," claimed a covering composed of or 'lVrappings of paper saturated with. adhesive material, 'and compressed while formed into tUbular sections "of a thickness of OM half in.cll Qr more, "'SuhStan,tlally as descdbed... A reiss)le 9f the patent-No. 8,<52. August lO, 1.879:-omitted frolll the claims the quoted words. Held. that this was an etil$rgement the claim, rendering the reissue invalid; and that this dect could not be avoided on the theory that a coverinjf of leBS than halt all iIIolr