22 F. 656 | U.S. Circuit Court for the District of Southern New York | 1884
The defendant moves for a rehearing upon the ground that the interlocutory decree erroneously adjudges that the complainant Dietz is entitled to an injunction, and an accounting of damages and profits, as the owner of a license under the patent infringed by the defendant. It was held that Adams,had acquired the title of the Chicago Manufacturing Company in the patent in suit, subject to an outstanding license which that company had granted to Archer and others to make and use the patented invention in the
The point is now taken that the license was not assignable, but was a personal privilege to the parties named in the instrument; and it is also insisted that if the bill should be dismissed as to Dietz, it must also be as to Adams, because the latter cannot maintain a suit without joining the licensees. It may be conceded that, generally, a license to make and use a patented invention is a privilege personal to the licensee, which is incapable of assignment; but here the license reserved no royalty to the owner of the patent, and granted the right, not only to the persons named as parties of the second part, but also to their executors, administrators, and assigns. Such a license is assignable. Hamilton v. Kingsbury, 15 Blatchf. 64. It is also urged
Although Dietz has not acquired the interests of Archer and Ellison in the license, the complainants should be allowed to proceed to a decree for their damages and profits. If it had appeared that the original licensees had treated the license as a partnership asset between themselves, Dietz would have acquired the interests of all under the purchase from the receiver. The rule that a receiver cannot convey title to a patent unless the owner of the legal title joins, as held in Gordon v. Anthony, 16 Blatchf. 234, does not apply to the transfer of a mere equitable title. The circumstance that the instrument came to the hands of the receiver with the rest of the firm property is suggestive that the licensees regarded the license as a partnership asset. The additional circumstance that Pancoast, who is the only survivor of the firm, and, as such, regarded himself as succeeding to all the firm property not transferred by the receiver, assigned the license to Dietz as a firm asset .in further assurance of the receiver’s transfer, bears towards the same conclusion. If the legal representatives of Archer and Ellison have any interest in the accounting, their interests have long lain dormant, and the objection that they are not joined as complainants should not be regarded favorably. Graham v. McCormick, 11 Fed. Rep. 859. If the objection to their non-joinder had been taken by the answer, it. could not have been disregarded. But such an objection may be waived in equity as well as at law. At law, unless such non-joinder is pleaded in abatement, the only effect in an action of tort is to reduce the plaintiff’s recovery to his proportionate share of the damages. And if one