IlA.TFIELD V. SMITH.
855
HATFIELD 'V. SMITH
et al.
(Circuit Cowrt, S. D. Ohio,W. D. November 7, 1800.)
1.
PATENTS FOR
An instrument which is in terms atransfer by complainant to defendant of' the exclusive right "to manfacture and sell and vend" certain patented articles; the purch\l:llers to have the right to use the articles, which expresses that it is intended for the purpOse of vesting in defendants all the rights of complainant in the mlj,nu- , facture· and sale of such articles, but which expressly provides that complainant shall retain the ownership of the patent, and in which defendants stipulate for payment of royalties and to do aU reasonable things for the successful manufacture and salelilf the patented articles, is a mere license. " . Where defendants admit that they have manufacturedandllold under such license, and that they have assigned whatever rights they had thereunder, they will not permilited to plead that they were led to make. the. cOlltrfwt. ant's false and fraudulent representatlOns, nor that the patent was invalid, as complainant knew. "
.
2.
SAME-ESTOPPEL.
In Equity. Parkinson Parkinson, for complainant. Peck Rector and E. W. Kittredge, for respondents. SAGE, J. 1. The contention of the defendants that the contract forming the basis of the bill is not a mere license, but is a grant of the entire equitable title in and to the patent, with the right to the grantees to assign at pleasure, subjectto the conditions of the contract, is not, in my opinion, well founded. The contract is nothing more than a license. It is in terms a transfer of the sole and exclusive right "to manufacture and sell and vend" the patented improvements throughout the United States, the purchasers to have the right to use. It expresses that this grant is intended for the purpose of vesting in the defendants all the rights of the complainant in the manufacture and sale of said improvements throughout the United States under said inventions, but it is expressly provided that the complainant shall retain the ownership of the patent. Now, while it is true that the transfer of an exclusi\'e right to make and use and sell maybe an assignment, and not a mere licensa, it is also true that the "right to the right to sell, and the right to use, are substantive rights, and may be granted or conferred separately by the patentee," (Adam8 v. Burke, 17 Wall. 456,) and that the conveyance of all these rights is necessary to make the transfer an assignment, and not a license. The right to use is not, under the contract, conveyed to the defendants, only the right to manufacture and sell. Moreover, the express provision of the contract retaining the ownership of the patent in the complainant, is not to be overlooked, nor is its significance to be disregarded, nor are the stipulations of the defendants to do all reasonable things for the successful manufacture or sale of the pat. . ented articles and for the payment of royalty. 2. The defendants admitting, as they do, that they manufactured and sold under the license, and that they have assigned whateverrights they had thereunder to the parties named in the bill and in the answer,
,356
FEDERAL REPORTER,
vol. 44.
they will not be permitted to plead that they were led to make the contract by false and fraudulent representations of the complainant, nor that the patent was invalid, as the complainant well knew. It has been held that if the licensee, under the assumed protection of the patent, has enjoyed advantages of which, without the license, he would have been deprived, he is subject to the obligations of the license, and continues so to be until he is disturbed in his enjoyment by a superior patent, or until the patent under which he acts has been declared invalid or annulled. 3 Rob. Pat. § 1251. and cases there cited. The amended answer differs from the answer, to which exceptions were sustained, only in that it avers that the complainant falsely and fraudulently represented that he was the inventor of the p'atented article in the license. The amen'dment does not, in my opinion, add anything to the legal effect of the answer. Leave to file the amended answer is therefore refused.
SUTRO BROS. BRAID
Co.
V. SCHLOSS
et al,
(Circuit Court, So D. Ne:w York.
November 18,1890.)
PATENTS 'tOll INVENTION-DESIGN FOll BRAID-INFRINGEMENT.
Letters patent N(,.18,1589. granted to Valentine Schuck, September 4, 1888, for a design for braid covers. !> design baving when seen in cross-section, two extended flattened ellipti"al curves divergiull at an obtuse angle from each other. witb a third rib projecting from the center in the form of a convex curve, and smaller than tlle others, presenting tlle appearance of a trefoil. not infringed by a braid made in'two colors, and haVing four ribs, the two lower ones being smaller than the others. '
In 'Equity. DavidA. Bu'f'll', for complainant. Alfred Ely, for defendants,. COXE, J., 'fhis is an equity suit for the infringement of letters patent No. 18,589, granted September 4, 1888, to Valentine Schuck, assignor to complainant, for a design for braid. used in trimming ladies' garments and for similar purposes. The design shows a deep, central groove indenting one face of the braid, the opposite face being rounded and crowned with a slight, central, longitudinally projecting rib. In cross-section the design has the appearance of a trefoil or three-leafed clover, with the lower leaf smaller than the other two. The claim is as follows: "The design for a piece of braid herein shown and described. which consists in the form imparted thereto, which is defined in cross-section by two extended flattened elliptical curves diverging at an obtuse angle from each other to form a'central re-entrant angle or cusp at their intersection on one side, and which terminate on the opposite side in the intersecting lines of a ce1'!tral outwardly projecting convex curve of small diameter." The.defenlles are lack of patentable novelty, non-infringement and that the patentis invalid because the claim is indefinite and functional. The
