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SMITH v. THOMPSON et al.

(Circuit Court, D. Connecticut.

March 28, 1910.)

No. 1,313.

Patents (§ I'M*) — Suit in Equity to Outain Patent — Eight to Maintain —Effect op Assignment.

Where an applicant for a patent lias made an absolute assignment oí his rights in the invention, the right to bring a suit in equity to obtain issuance of the patent under Uov. St. § 4915 (U. S. Comp. St. 1901, p. 8392), is vested in the assignee.

[Ed. Note. — For other cases, see Patents, Cent. Dig. § 16G, Dec. Dig. § 114*1

In Equity. Suit by Lester C. Smith against Hugh L. Thompson and the Coe Brass Manufacturing Company. Oh demurrer to hill.

Demurrer sustained.

Walter E- Ward, for complainant.

John P. Croasdale and Howard S. Okie, for defendants.

PLATT, District Judge.

Here is the gist of the bill demurred to: Prior to March 1, 1901, complainant had valuable property rights in an invention relating to improvement in wire drawing machines. On July 6, 1903, he had perfected his invention and made application for letters patent thereon. On March 11, 190-1, defendant Thompson tiled an application which included the same invention, and thereupon interference proceedings were instituted between the parties, upon which the examiner decided in favor of complainant. An appeal to the examiner in chief resulted in a decision for Thompson. An appeal to the Commissioner resulted in a decision for complainant. An appeal to the Court of Appeals of the District of Columbia resulted in favor of Thompson. Certain claims not in interference are still being prosecuted in the Patent Office by the Coe Brass Manufacturing Company, assignee.

While the interference was pending, after the Commissioner had awarded priority to the complainant, and before the decision by the Court of Appeals, the complainant mack- a contract with the Coe Brass Manufacturing Company, in nliich it was agreed that in consideration of an absolute assignment, made that day, by the complainant, of all his rights in the invention to the Coe Brass Manufacturing Company, the latter would pay him $2,500; that complainant would carry tó a final determination his interference proceedings with Thompson, and *722if lie succeeded the Coe Brass Manufacturing Company would pay him $2,500 more; that after final determination of the interference proceedings with Thompson the Coe Brass Manufacturing Company would perfect the invention just sold to it by Smith, making no material change in the claims without the consent of Smith’s attorney; that after the Coe Brass Manufacturing Company had perfected the invention and obtained the patent therefor it would issue to Smith, the complainant, an exclusive license under the patent.

The bill then goes on to show that the complainant assigned his rights under the application for letters patent in accordance with the contract, and that the Coe Brass Manufacturing Company paid him $2,500, as provided for therein, but has not paid the further sum of $2,500 referred to therein; that the application is still pending in the Patent Office, but that the Coe Brass Manufacturing Company will not tell complainant anything about it; that he has asked the Coe Brass Manufacturing Company to join him in this suit, but that they refuse; that the Commissioner of Patents will soon issue a patent to Thompson, based on the interference claims; that complainant was the first inventor of the invention involved in interference, and is in law and equity entitled to letters patent therefor as assignor of the Coe Brass Manufacturing Company; that said Thompson will probably soon-get his patent therefor.

Upon this showing he wishes the court to decree: That the complainant is entitled to receive a patent for his invention upon the claims specified in the interference, and upon the other claims not in that dispute, so that the patent may issue to complainant as assignor, and to the Coe Brass Manufacturing Company as assignee, and that the Commissioner of Patents be enjoined from issuing a patent to defendant Thompson as the result of the latter’s successful interference; also to decree that Thompson be enjoined from receiving the patent, and from making use of it to complainant’s disadvantage.

The argument of the complainant in behalf of the bill is simply this: That he is the equitable owner of the right to secure a patent for his invention, that all parties in interest are before the court, and to secure equity, truth, and justice it is imperatively necessary that the court should hear the parties.

The trouble with the contention is that the jurisdiction of the court in this particular instance is of purely statutory creation. It must be found in section 4915, Rev. St. (U. S. Comp. St. 1901, p. 3392), or it does not exist. I am satisfied that in pursuance of that statute the only one entitled to securg a right to the patented invention at the time of the bringing of this suit was the Coe Brass Manufacturing Company. The present complainant had of his own accord so treated his original right as to locate it absolutely and permanently in the possession f the Coe Brass Manufacturing Company. Por this act he can blame no one but himself. Pie did what he did because he deemed such -action to be for his own best interests. He cannot now whiffle about, and, finding no support from the Coe Brass Manufacturing Company, come to the court in the guise which he would have been warranted in assuming if he had not dealt with the Coe Brass Manu*723factoring Company at all. He cannot trade for his cake, and, when he finds it made of ashes, calmly ignore the trade.

Let the demurrer be sustained, and bill dismissed, with costs.

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