58 F. 404 | U.S. Circuit Court for the District of Indiana | 1893
On the 21st day of April, 1892, Isaac 0. Walker brought suit in this court against the city of Ft. Wayne for the alleged infringement of letters patent No. 165,438, issued to’ Robert Bragg on the 13 th day of July, 1875, as the original and first inventor of a certain new and useful improvement in gong attachments for engine houses, and asking for an injunction and for damages. The particular infringement complained of consists in the defendant making, constructing, and using the gong attachments for its engine houses. The hill further charges that on the 17th day of December, 1885, Bragg, by a due assignment in writing, for a good and valuable consideration, sold, assigned, and transferred to the plaintiff his entire right, title, and interest in and to the letters patent and the invention and improvement secured thereby, together with all demands, claims, accounts, rights, and rights of action which had accrued thereunder since the issue of said letters patent. On the 4th day of November, 1892, Nathan O. Ross, with leave of court, filed in this canse a complaint against the city of Ft. Wayne which is denominated a “supplemental and amended hill of complaint.” The hill is filed hy the plaintiff in his own behalf, and as trustee for Elbert W. Shirk, Edward 0. Egan, and Atwater J. Treat. It sets forth the same facts, except in respect of the title of Ross, exhibited in the original bill, and asks for an injunction and for damages, and that Ross may have the full benefit and advantage of the proceedings had in the suit of Walker vs. The City of Ft. Wayne. It shows that on the 14th day of September, 1892, Walker transferred to Ross his entire right, title, and interest in and to the letters patent, and in and
(1) That the assignment and sale by Walker to Eoss 'operated to divest the former of all right to, and interest in, the matter in question, and-disabled him from the further maintenance of the suit; and that the latter could not be admitted to file any bill or pleading to revive and continue the proceeding; and that the bill filed by the former ought to be dismissed, and the latter required to bring a new suit.
(2) That the bill is defective because it is not alleged therein that the improvement claimed in the letters patent has not been patented or described in any 'printed publication in this or any foreign country.
(3) That the bill is without equity because the plaintiff is en-, titled, on his own showing, to no relief except for the recovery of damages for past infringements, and because the term of the pat-: ent had expired before the present plaintiff acquired any right to or interest in the suit which he now seeks to revive and prosecute..
It *is firmly settled that a suit in equity must be prosecuted by and in the name of the real party in interest. Where the sole-plaintiff, suing in his own right, is deprived of his whole interest'in the matters in controversy by an event subsequent to the’’ institution of the suit, as where the plaintiff has assigned his: whole interest to another, the plaintiff is no longer able to prosecute for want of interest; and, as the assignee claims by a title* which may be litigated, the benefit of the proceedings by the' assignor cannot be obtained by an assignee by means of a supple-' mental or amended bill filed by him. Story, Eq. Pl. § 349; 2 Daniel, Ch. Pl. & Pr. (4th Amer. Ed.) 1518, 1519; Mills v. Hoag, 7 Paige, 18; Sedgwick v. Cleveland, Id. 287; Van Hook v. Throckmorton, 8 Paige, 33; Mason v. Railroad Co., 52 Me. 82, 107. The benefit of the proceedings had by the assignor may be obtained by the assignee by filing an original bill in the nature of a supplemental bill. See authorities supra. The bill filed by Eoss contains all' the material averments of an original bill, with the statement of supplemental matter showing the transfer of the rights in question subsequent to the institution of the suit. It is in the fullest sense an original bill in the nature of a supplemental bill; nor is this conclusion varied by the fact that the pleader has de* nominated it a “supplemental and amended bill.” Its character must be determined by its frame and by the nature of its aver-ments, and not from the name by which the pleader has designated it. The bill has been properly filed by Eoss as assignee, and the suit cannot be dismissed nor the complaint held bad, on the sole ground that Walker has, since the institution of the suit, trans
The important and difficult question is whether i,lie present plaintiff can maintain his bill on the equity side of the' court. It is elementary that a-party who has a plain, adequate, and complete remedy at; law cannot successfully invoke the jurisdiction of a court of equity. The original plaintiff brought suit about two and a half months before the term of his patent expired. He prayed for an injunction in his bill, but took no steps to procure a temporary restraining order, or to bring the suit to a hearing, while he remained the party of record. While an application for a temporary restraining order might have been made before the term of his patent expired, yet, according to the course of procedure of the court, it would have been impracticable to have prosecuted the suit to final hearing and decree within that, time. When the patent has expired, and the entire claim of the plaintiff against the defendant rests upon the infringing acts performed during the term, an action on the case for the recovery of damages generally affords a complete redress, and the only one to which the plaintiff is entitled. Consolidated Safety Valve Co. v. Ashton Valve Co., 26 Fed. Rep. 319; 3 Rob. Rat. § 1092. An adequate remedy at law exists in favor of the owner of tlie patent against the infringer whenever the sole relief required is compensation for past injury, provided the remedy can be afforded without equitable aid. When the plaintiff has chosen to seek his recompense for the enjoyment of his invention through an established license fee, and the infringing acts raise an implied acceptance of the offer, the sum which the plaintiff is entitled to recover is certain and fixed, and the remedy at law is adequate, and a court of equity is without jurisdiction; and, where the plaintiff has a mere right to the recovery of damages for past infringements,
It follows that the demurrer should be sustained, and the bill dismissed. Let the bill be dismissed without prejudice to an action at law, if the plaintiff should be so advised.