129 F. 757 | U.S. Circuit Court for the District of Massachusetts | 1904
This is a suit in equity brought by the complainant to compel the defendant to assign to it United States letters patent No. 604,335, No. 647,023, and No. 647,024, all of said letters patent having been granted to the defendant; also to' assign to the complainant an application for United States letters patent No. 16,808, filed by said defendant in the Patent Office May 15, 1900, and now pending there.
The case is now before the court upon a motion for a preliminary injunction to restrain the defendant from' assigning the patents and the application named in the bill of complaint, and from constructing, using, or selling any of the improvements described therein. The bill alleges that prior to October 5, 1894, the defendant and one William P. Skiffington were owners of certain inventions and improvements relating to steam systems and devices for removing the water of condensation from the cylinders of paper drying machines, and of certain other inventions relating to the same subject, and that, being in possession of these patents and inventions, they caused the complainant corporation to be incorporated for the purpose of acquiring all their interest in the said patents and inventions; that on October 5, 1894, an agreement in writing was entered into by the
“Fourth. The said Andrew G. Paul agrees that if he shall make any further improvement or improvements on the above-mentioned inventions while he is in the employment of the party of the second part or during a period of two years, after the termination of such employment, the party of the second part shall have the option to purchase or own the said improvement or improvements and patent or patents that may be granted therefor, both in the United States and in foreign countries, the said party of the second part to pay in consideration for said improvement or improvements and patent or patents merely the expenses connected with the securing of said United States and foreign patents. It is understood and agreed that the said party of the second part shall elect whether it shall purchase the said improvement or improvements referred to in this clause and the United States and foreign patents for the same before any application for a patent has been filed for said improvement or improvements in the United States or any foreign country; and if prior to the filing of any such application in the United States or any foreign country the party of the second part shall not elect to purchase and own the said improvement or improvements, then the said Andrew G. Paul shall retain title to the said improvement or improvements free and clear of any claim thereto on the part of the party of the second part, and shall have the right to apply for and obtain in his own name and for his own benefit a patent or patents for any such improvement or improvements both in the United States and foreign countries.”
It appears further from the bill and from the testimony in the case that prior to May i, 1903, the defendant made certain improvements on the inventions referred to in the agreement, and particularly improvements described in letters patent Nos.! 604,335, 647,023, and 647,024, and in an application for a patent-filed by the defendant May 15, 1900, No. 16,808, and that he now holds for his own use and in his own name the said letters patent and the said application for letters patent.
The bill further alleges that the complainant fears that defendant will transfer the letters patent and the application to a third person, and will cause the complainant irreparable damage, and asks, among other things, for a temporary injunction restraining the defendant
The defendant in this suit makes the contention that the claim of the complainant to the patents and the application enumerated cannot be sustained, for two reasons: First, because the inventions claimed in said patents and in said application are not improvements upon the inventions assigned to the complainant company in the contract in suit; and, second, because the complainant company, having full notice of the inventions and of the defendant’s intention to file the application, did not elect to own the inventions, as it was bound to do under the terms of the fourth clause of the contract of 1894. Much testimony is offered on the questions of law and fact arising under the first contention, and very able and ample arguments have been submitted on both sides on these questions. The court prefers, however, to address itself first to the consideration of the second contention raised by the defendant, namely, did the complainant company have full notice of the inventions set forth in said patents and in said application, and did the said company have full notice of the defendant’s intention to file said application, and, having such notice of the inventions and of the defendant’s intention to file the application, did the complainant company elect to purchase the improvements enumerated in said patents and in said application under the terms of said contract? Under this second contention, for the purposes of the case, we may assume the admission that the inventions were “improvements,” within the meaning of the contract.
Upon this motion for a temporary injunction, it is incumbent upon the complainant, before it can be entitled to the relief sought, to show that it did exercise its right of election. The testimony with reference to the first two patents enumerated in the bill is different from the testimony on this point in relation to the last-named patent and to the application No. 16,808. With regard to the last-named patent and the application, the testimony fails to satisfy the court that the complainant, after having full notice, did elect to purchase the improvements to which this patent and this application relate. In reference to the application the testimony on this subject is very ample. The testimony of the defendant and of several directors is distinct that the complainant did have full notice that the patent was to be applied for, but the testimony does not satisfy us that they elected to purchase the improvement named in the application. In this peti
With regard to patents No. 604,335 and No. 647,023 a different state of facts exists. The corporation did elect to own these patents, and did pay for the filing of the applications and for the preliminary work of getting the patents, but failed to pay the final fees. These fees were paid by the defendant, he taking the patents in his own name. While a more difficult question arises in regard to these patents, we think that in regard to them the complainant has not shown a right to the remedy sought upon this motion. The testimony indicates that the complainant corporation acted advisedly in regard to discontinuing their payments, and concluded not to carry out their election, and not to receive and take the patents in their own name. They do not, then, prove a right to the patents under the agreement.
When all the testimony is taken, and the cause comes before the court for a final hearing, it may be that the examination and cross-examination of witnesses may present the case in a new light. The practice in the federal courts, and especially in this circuit, is to refuse an injunction pendente lite unless the case shows beyond reasonable question the necessity for such intervention of the court. The practice of this circuit has been, except in' clear cases of necessity, to leave a cause untrammeled by injunctions or decretal orders until the final hearing.
The court is of the opinion in the case at bar that it is its duty to deny the temporary injunction restraining the defendant from assigning the patents and the application, and from constructing, using, or selling the described inventions. The motion for temporary injunction is denied.