9 F. 556 | U.S. Circuit Court for the District of Eastern Missouri | 1878
The plaintiff avers, substantially, that he is owner of an undivided two-thirds interest in the patent described, and that the defendant is owner of the other undivided one-third interest; that the defendant is using a device which is an infringement upon their common patent, and that he is so doing under cover of their common patent. Hence the claim for damages for said infringement, — not for the entire amount thereof, but for plaintiff’s proportion, to-wit, two-thirds.
The direct question presented is whether an infringer of a patent can escape liability for his infringement because he is a joint owner of the original patent upon which the infringement occurs.
The cases cited do not reach the precise point raised by the bill. It is evident that if a stranger was guilty of the infringement he
The case of Pitts v. Hall, 3 Blatchf. 204, and the comments thereon in Curtis, Pat. § 108 et seq., do not cover this case. The question there discussed pertains to the use by one joint-owner of the common property. The difficulties in maintaining an action for an infringement against a joint-owner who merely uses the common patent may be insurmountable. As to that no opinion is expressed. In this case an entirely new and distinct proposition is presented, viz.: one of the several joint owners is not using the common patent, but an infringing patent. His defence is that inasmuch as he had a right to use the original patent without question from his joint owners, despite the decision in Pitts v. Hall, supra, he has a right also to use any infringing patents, on the ground that his right to use the original, being vested in him, his use of other and infringing patents did not cause any wrong or injury to himself as joint owner. In other words, the defendant contends that as one joint owner he could use the common patent without being liable to account to the other joint owners; that he could not bo sued as an infringer for using what he had a right to use by virtue of bis proprietary interest; and therefore, if he used an infringing device, be was only injuring himself in what ho had a proprietary right to forbid.
Demurrer overruled.