295 F. 72 | 2d Cir. | 1923
On May 23, 1911, there was granted to the appellee Frank R. Craig letters patent No. 993,034 “for improvements in the means and methods of demagnetizing paper” on an application filed January 9, 1908. Craig transferred the patent to the appellant. In that agreement of transfer, he covenanted and agreed that any further instruments necessary would be executed by him and any further acts and things which would be necessary to carry into full effect the true intent and meaning of the agreement between the appellant and the appellee Frank R. Craig would be done so that the appellant would become the sole and exclusive owner of the invention and “all improvements thereon and modifications thereof which would become the property of (said Craig) or which should come under his (Craig’s) control.” He agreed that he would not manufacture or sell any. machines made in accordance with the said letters patent as long as the appellant should manufacture a machine in which gas is employed. At the time of this transfer, Craig was a large stockholder and officer of the appellant. He later parted with the control of the stock, resigned as an officer, and thus severed his connection with the company. Eater, appellee the Static Control Company, Inc., was incorporated, and he became interested as an officer of that company, as did his wife and son-in-law, the appellees Sarah R. Craig and Andrew J. Smith. This corporation proceeded to manufacture and sell a device which is claimed to be an infringement of the patent in suit. The appellees say that their structure is manufactured under and pursuant to letters patent No. 1,286,132 which were applied for by the appellee Smith and assigned before issuance to the appellee Sarah R. Craig. This patent is for a printing press and was applied for August 31, 1918, and granted November 26, 1918. The appellant sought to prove on the trial that Smith was not the real inventor of this patent, but that one Cohen, now an officer and stockholder of the appellant, was the true inventor. The devices made under each of the letters patent relate to means for removing static electricity from paper. When paper is passed through a printing press, especially in dry and cold weather, the friction of various parts of the machinery upon each other and upon the paper causes the latter to be charged with static electricity. The sheets of paper, as they are discharged from the press, tend to adhere together, and it is very difficult to handle the same on that account. There is a tendency of the fresh and still moist ink upon the paper to offset from one sheet to the other. It is therefore desirable to not only discharge the static electricity from the paper as it comes from the press, but also to dry the ink. This is accomplished by passing the paper as it comes from the press over a series of small gas burners.
“1. The combination of a reciprocating carriage, a burner carried thereby and provided with a cock and means for automatically actuating the cock during the movement of the carriage.”
“7. The combination of a reciprocating carriage, a longitudinal burner movable laterally therewith and automatic means actuated by the movement of the carriage for controlling the admission of gas to the burner.”
i The appellant seeks the following relief: (a) That its patents be held to be valid and infringed by the appellee’s device; (b) that the invention, patent No. 1,286,132 be declared an invention of Herbert Cohen, an officer of the appellant, and that letters patent for said invention be mandatorily transferred from Smith to it; (c) that the appellees be restrained from selling the devices for removing static electricity from paper because of the agreement entered into between Craig and the appellant. It seems to be conceded that the device manufactured and sold by the appellee is not that illustrated and described in the patent in suit, No. 993,034; but it is urged that for the purpose of this Suit, this patent must be taken as a basic or pioneer one covering all the devices intended to remove static electricity from paper, and that the claims thereof should be given the fullest interpretation. It is argued that the appellee Frank R. Craig, having applied for and having obtained this patent and having sold the same to the appellant for a valuable consideration, thereafter entered into a conspiracy with the other appellees for manufacturing and selling a device of the same character, is now estopped from attempting to justify his case “by straining interpretations of the language of the claim.”
The devices of both patents are applied to printing presses which have a reciprocating or back and forth traveling support for handling the printed sheets delivered from the press. Each time this support moves back and forth, it delivers a printed sheet. On the rearward movement of the carriage, the sheet is carried with it, and on the forward movement of the carriage, a corresponding forward movement of the sheet is prevented in a manner familiar to the printing art, so that the rear end of the carriage during the forward movement of the latter sweeps from one end of the halted sheet to the other. In both devices, a gas burner is mounted adjacent to this rear edge of the travelling support so that the flames or heated air from the burner may similarly sweep over the sheet from one end to the other. In the patent in suit, the adjustable stops are provided and so located on the part of the printing press fixed relative to the carriage, that at or near the end of the travel of the carriage in either direction, one of said stops engages the handle of a valve fixed on the carriage and in the fuel supply line for the burner and lowers the gas flame or, if the common expedient of a pilot light is present, extinguishes the flame. The arrangement is such that during the major travel of the support relative to the
Evidence was offered upon which the appellant bases its claim that Cohen, the secretary and treasurer of the appellant, was, in point of fact, the inventor of the patent in suit instead of the appellee, Alfred J. Smith. It is accordingly urged by the appellant that it is entitled to relief directing Smith to convey to it the Smith letters patent. It appears there is now pending in the Patent Office an interference proceeding under section 4904 of the Revised Statutes (Comp. St. § 9449) which constitutes a test as to the priority of invention, and this puts in issue the validity of the patent. That application is now pending on appeal before the board of examiners. The court below held that the exclusive remedy of the appellant for testing the priority of invention is with that tribunal except in a direct suit by the Smith patentee for infringement, where the validity of his patent, including the questions of originality and date of invention, might be litigated. A
“It is a controversy between two individuals over a question of fact which has once been settled by a special tribunal, entrusted with full power in the premises. As such it might well be argued, were it not for the terms of this statute [§ 4915] that the decision of the Patent Office was a finality upon every matter of fact.”
It is 'thus apparent that any priority controversy except one arising under sections 4915 and 4918 of the Revised Statutes is to bé considered a finality in any subsequent infringement litigation where the patent in suit is not a patent granted on the invention which was involved in said priority controversy in the Patent Office'. Until the applicant has exhausted his rights through the tribunals of the Patent Office, he may not raise the question here sought to be raised in the District Court.
As to the third cause of action, there is no diversity of citizenship, but the appellant seeks as equitable relief, an injunction restraining tire appellees from manufacturing the device in question because of the fact that Craig sold his patent and interest to the appellant as referred to above. Wrongs alleged raise no controversy as to the patentability, title, scope, or monopoly of any patent, and in no way whatever does this cause of action involve a federal question. This right of action is based upon the alleged facts not essential to those involved in other causes of action mentioned in the bill. They are clearly separate and distinct from the two other causes of action here involved. A similar question was presented in Geneva Furniture Mfg. Co. v. Karpen, 238 U. S. 254, 35 Sup. Ct. 788, 59 L. Ed. 1295, where a bill included several causes of action, some arising under the patent laws and others on breach of contractual relations. One of the defendants was a corporation and could not be sued without its consent, in the district, save in a case arising under the patent law. In such case it was held that the rule in equity respecting a joinder of causes of action yields to the jurisdiction^ statute, and that if the designated defendant objected to the jurisdiction, the bill must be dismissed so
“But the other portions oí the bill stand upon a different footing. The causes of action which they present — those not founded upon an unauthorized making, using or selling of devices embodying the inventions of the. plaintiff’s patents but resting only upon a breach of contractual obligations — do not arise under the patent laws. New Marshall Co. v. Marshall Engine Co., 223 U. S. 473; Henry v. Dick Co., 224 U. S. 1, 14, 15. As to them no federal court can take jurisdiction of a suit against the West Virginia company without its consent, save in the district of its residence or that of the plaintiff, Judicial Code, § 51; and it hardly needs statement that the jurisdiction as • limited and fixed by Congress cannot be enlarged or extended by uniting in a single suit causes of action of which the court is without jurisdiction with one of which it has jurisdiction. Upon this point the rule otherwise prevailing respecting the joinder of causes of action in suits in equity must of course yield to the jurisdictional statute. Thus the West Virginia company’s objection while not good as to the entire bill was good as to the causes of action not arising under the patent laws. Whether these causes of action can be retained as against the other defendants, after they are eliminated so far as the West Virginia company is concerned, is not open to consideration now.”
The appellees having objected to the jurisdiction of the court, raised the question of the power of the court to consider and decide tbis controversy one way or the other. We think since there is no diversity of citizenship and no relation between these alleged contractual wrongs and the question of validity and infringement of the patent in suit, that the District Court was not vested with jurisdiction to hear the controversy raised by this cause of action.
For these reasons the decree is affirmed.