6 F. 721 | U.S. Cir. Ct. | 1881
This is a motion to dismiss a cross-bill, as improvidontly filed. The circumstances under which the bill was filed are as follows: On the.seventh of September, 1875, the commissioner of patents issued to Rhodes Lockwood letters patent No. 167,455, for “Improvement in India-rubber erasers.” On the twenty-fifth of May, 1877, one Francis TI. Holton, claiming to be the original and first inventor of a certain improvement in erasive rubber, by an assignment in writing, sold and transferred unto Orestes Cleaveland all his right, title, and interest in and to said improvement, which assignment was duly recorded in the patent-office of the United States, September 27, 1878, in Book J 23, p. 296, of transfers of patents. On the ninth of June, 1877, the said Holton made application to the commissioner for letters patent for said improvement. The commissioner being of the opinion that the application interfered with the letters
This condition of affairs existing between the parties, on the second of November, 1880, Lockwood filed a bill in this court against Cleaveland, setting forth the existence of the two', patents, and their interference, one with the other, and praying that the defendant’s letters patent might be decreed void, and that he might be restrained, by injunction, from instituting any suit at law or in equity for any alleged infringement thereof. The defendant has answered, denying that Lockwood was the original and first inventor of the improvement described in his letters patent, and claiming that he, as the assignee of Holton, is entitled to the invention, and concluding with the prayer that the complainant’s patent may be adjudicated void. Simultaneously with the answer, and by leave of the court, the defendant, Cleaveland, also filed a
The counsel for the complainant in the original suit now asks the court to dismiss the cross-bill, on the ground that section 4918 of the Eevised Statutes affords all the relief in the original suit which the defendant can possibly have in the cross-suit. The motion involves the true construction of that section, which is a substantial re-enactment of section 16 of tlie patent act of 1836, as amended by section 10 of the act of March 3,1839. It provides that, “whenever there are interfering patents, any person interested in any one of them * * -» re ay have relief against the interfering patentee, and all parties interested under him, by suit in equity against the owners of the interfering patent, and tlie court, on notice to adverse parties, and other due proceedings had according to the course of equity, may adjudge and declare either of the patents void, in whole or in part. *' * *” The design of the provision is obvious. The congress meant to give a speedy and complete remedy to the owners of interfering patents, and, to this end, to clothe tho courts with jurisdiction to adjudge and declare either of the patents void, in whole or in part, or inoperative or invalid in any particular part of the United States. The difficulty and doubt arise wholly from the phrase “due proceedings had according to the coarse of equity,” which seems to have been added to the previous legislation, and intended as a limitation upon the remedy, and to conclude the parties to three modes of procedure recognized in equity practice.
Nothing is moro firmly settled in equity than that where a defendant seeks the aid of the court for tho purpose of enforcing affirmative rights, he must file a cross-bill, although such a course is not necessary when he relies upon his rights merely as a defence to the relief sought against him. 2 Dan. Ch. Pr. 1550*'.
The general rule is that he cannot have any positive relief against the plaintiff, even on the subject-matter of the suit, except by cross-bill. Story, Eq. PI. § 398, n. 3; Miller v.
It is quite clear, from the reasoning of the court in the opinion' deciding the case, that if the same learned tribunal should be called upon to construe the section under consideration, it would have no difficulty in finding in its provisions ample authority for the courts to give affirmative relief to a defendant, on an answer which denies validity to the complainant’s interfering patent. But, whether this be so or not, all the courts which have had occasion to construe the section have assumed or decided that they had jurisdiction over all the interfering patents, upon a bill filed, and that on proper issues formed by the pleadings, without the intervention of a cross-bill, affirmative relief could be granted to either of the parties entitled to it, by declaring one or the other, or all, of the patents void or valid.
The case of The Gold & Silver Ore Separating Co. v. The United States Disintegrating Ore Co. 6 Blatchf. 307, invoked-the jurisdiction of the court, under the sixteenth section of the act of July 4, 1836, and was heard by Judge Blatchford, on bill and answer. The bill alleged that on the eighth of
The answer set up in defence that the original patent to Gale was not for the same invention as that described and claimed in the Mason patent; that Mason was the prior inventor of the inventions therein patented, and that the said re-issue No. 1,988 had been procured and the claims expanded for the purpose of fraudulently covering the inventions of Mason. 1’t then prayed that the court would decree,, the re-issue to be void and the patent No. 45,803 to be valid. The proofs were taken and the case argued upon the issues raised by the pleadings, and the court decided the several questions, (a) of interference between the patents, (b) of priority of invention, and (c) of the validity of the respective patents, holding that one was good and the other bad. The cause was argued by Mr. Keller for the complainants, and by Mr. Gifford for the defendants, and the best evidence that the method of procedure was regular is found in the fact that neither of these distinguished patent lawyers suggested a doubt, on the argument, that the court had authority, under the provisions of the statute, to decide such issues upon bill and answer.
The next case, in the order of time, is The Union Paper Bag Co. v. Crane, reported in 6 O. G. 801, tried before Judges Clifford and Lowell. The bill was filed under section 4918
The only other case, involving a construction of the section under consideration, that I have been able to find, is that of Foster v. Lindsay, 3 Dill. 126, in which Judge Treat, sitting in the circuit court for the eastern district of Missouri, expressly held that the section vested the power in the court to adjudge either of the interfering patents void, in whole or ip part, and also authorized a decree that both patents were void. The learned judge found a support to his opinion in the allusion made by the supreme court in Mowry v. Whitney, 14 Wall. 440, to the scope and purport of the sixteenth' section of the act of 1836. The defendant had set up in his answer that both of the interfering patents were void for want of novelty. The court allowed the defence to the action, and said that the power conferred by the statute to declare either of the patents invalid, in whole or in part, necessarily included full authority, where the evidence justified, on the issues made,
Upon the whole caso, I am of the opinion that the motion of the complainant must prevail, and the cross-bill be dismissed; but, under the circumstances, without costs.