Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24 (1923)
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Crown Die & Tool Company v. Nye Tool & Machine Works
No. 240
Argued January 17, 18, 1923
Decided February 19, 1923
261 U.S. 24
CERTIORARI TO THE CIRCUIT COURT OF APPEAL
FOR THE ELEVENTH CIRCUIT
Syllabus
1. A suit based on an alleged assignment of a patent right, involving the validity of the assignment under the patent laws, is within the jurisdiction of the district court as a suit arising under those laws. P. 33.
2. The mere right to exclude others from making, using, or vending a patented invention is not such an interest as may be assigned under the patent laws, and an attempted transfer thereof as against a particular person with right to enjoin his future infringements and collect damages therefor is void. Pp. 35, 39.
3. An assignment by a patent owner not conveying any interest in the patent itself, but only a claim for past damages against infringers, does not confer upon the assignee a right to sue for such damages in his own name without joining his assignor, who must also have been the owner of the patent when the infringements were committed. P. 39.
4. The effect of such an assignment depends upon the patent law, unaffected by Equity Rule 37, providing that suits shall be prosecuted in the name of the real party in interest. P. 44.
276 F. 376 reversed.
This was a bill in equity filed in the United States District Court for the Northern District of Illinois by the Nye Tool & Machine Works, a corporation of Illinois, having its place of business in Chicago, against the Crown Die & Tool Company, a corporation of the same state and doing business in the same city. The plaintiff sought to enjoin the infringement of a patent for a machine for forming screw-thread cutting devices, and for an accounting of profits and for damages. The inventors were Wright & Hubbard, and the patent issued to their assignee, the Reed Manufacturing Company of Pennsylvania.
The plaintiff based its right to sue on the following instrument, which it terms as assignment:
EXHIBIT A
Whereas, Reed Manufacturing Company, a corporation of Pennsylvania, is the owner of letters patent of the United States, No. 1,033,142, for a machine for forming screw-thread cutting devices, granted July 23, 1912, on an application of Wright & Hubbard; and
Whereas, under said patent, said Reed Manufacturing Company has the right to exclude others from manufacturing, using and selling the devices of said patent; and
Whereas it is believed by the parties that Crown Die & Tool Company, a corporation of Illinois, has been manufacturing and using devices in infringement of said patent; and
Whereas, Nye Tool & Machine Works is engaged in the manufacture of dies with which the dies made by said Crown Die & Tool Company, by the use of said infringing machine, are in competition; and
Whereas, Nye Tool & Machine Works is desirous of acquiring from Reed Manufacturing Company all of its rights of exclusion under said patent, so far as the same may be exercised against the Crown Die & Tool Company, together with all rights of the Reed Manufacturing Company against the Crown Die & Tool Company arising out of the infringement aforesaid:
Now, therefore, in consideration of one thousand dollars ($1,000.00) and other good and valuable considerations, the receipt of which is hereby acknowledged, the Reed Manufacturing Company hereby assigns and sets over to the Nye Tool & Machine Works all claims recoverable in law or in equity, whether for damages, profits, savings, or any other kind or description which the Reed Manufacturing Company has against the Crown Die & Tool Company arising out of the infringement by the Crown Die & Tool Company of the Wright & Hubbard patent, No. 1,033,142, and for the same consideration assigns and sets over all the rights which it now has arising from said patent of excluding the Crown Die & Tool Company from the practice of the invention of said patent, the intention being that, insofar as concerns the exclusion of the Crown Die & Tool Company under said patent, the Nye Tool & Machine Works shall be vested with as full rights in the premises as the Reed Manufacturing Company would have had had this assignment not been made, and that the Nye Tool & Machine Works shall have the full right to bring suit on said patent either at law or in equity against said Crown Die & Tool Company, and for its own benefit, to exclude the Crown Die & Tool Company from practicing the invention of said patent, and for its own use and benefit to collect damages which may arise by reason of the future infringement of said patent by the Crown Die & Tool Company, but nothing herein contained shall in any way affect or alter the rights of the Reed Manufacturing Company against other than the Crown Die & Tool Company, and for the same consideration all rights as are herein given against the Crown Die & Tool Company are given as against any successor or assignee of the business thereof.
REED MANUFACTURING COMPANY
By P. D. Wright
Its President
The defendant moved to dismiss the bill as follows:
Now comes the defendant, Crown Die & Tool Company, by its solicitor, and moves the court to dismiss the bill of complaint instituted in the above-entitled cause upon grounds and reasons therefor as follows:
1. That the bill of complaint states an alleged cause of action arising out of the assumed infringement of a patent in which plaintiff has no title, and prays an injunction, and accounting and damages.
2. That the owner of the entire or any part of the legal title to the patent sued on is not made a party to the suit.
3. That the legal effect of the alleged assignment set up as the basis of this cause of action and forming part of the bill of complaint herein is contrary to the statutes covering suits for infringement of patents, and shows on its face that the plaintiff has no interest in the patent sued on.
4. That the bill of complaint herein, including the alleged assignment, evidences a conspiracy against this defendant by the parties to the document identified as "Exhibit A," in which the plaintiff and the Reed Manufacturing Company assumed the function of the court in having already decreed that this defendant infringes patent No. 1,033, 142, and now seeks to utilize this Court to annoy and harass the Crown Die & Tool Company by instituting legal proceedings when no right of action exists.
5. That "Exhibit A" attached to the bill of complaint in this case purports only to convey to plaintiff all claims recoverable in law or in equity which the Reed Manufacturing Company may have against the Crown Die & Tool Company, over which subject matter this Court has no jurisdiction.
6. Prior suit pending, between the same parties in this Court, decision of which will determine any questions involved in this case.
Therefore this defendant respectfully moves the court to dismiss said bill of complaint with its reasonable costs and charges in its behalf most wrongfully sustained.
CROWN DIE & TOOL CO.
By Florence King
Solicitor for Defendant.
The district judge, in the interest of expedition, granted the motion to dismiss in order that the main question, i.e., the plaintiff’s right to sue, might be determined by the circuit court of appeals before the expense of an accounting should be incurred, although he thought the plaintiff had acquired the right under the instrument. 270 F. 587. The circuit court of appeals reversed the decree of dismissal, holding the instrument to be a valid assignment of an interest in the patent conferring the right to sue, and remanded the cause to the district court for an accounting and further proceedings. 276 F. 376.
Although the decree of the circuit court of appeals is not final, the importance of the question involved and the possible saving of useless litigation led this Court to grant the writ of certiorari before further proceedings in the district court.