M'CULLO}{' C/. AsSOCL\TIONHORLOGERE SUISSE.
479
·McCuLLOH
v. :AssoClATION HORLOGERE ,SV1SSE
et al.
(Circuit qourt, S.: D. New York. March 14,1891.) PATENTS FOR INVENTIONS-INSOLVENOy-RtGHTS OF RIlOErVlIB;··
Though it be conceded that under Rev. St. U. S. § 4898, the legal title to patents does not pass to the receiver of an insolvent debtor, the receiver of a dissolved corporation. which was the equitable owner of patents, may maintain a suit to compel the holder of the legal title to convey to him.
In Equity. Antonio Knauth, for complainant. John H. Kitchen, for defendants.
J. This bill is' brought to set aside certain assignments of W patents nll1qe by the dlilfendant Pailard to the defendant the Horlogere:Suisse, and to compel the last-named defendant to assign the patents to the complainant, the averments of the bill being that the assignments were made in fraud of the rights of the Non-Magnetic Watch Company, as equitable owner of the patents. It appears by the bill that the Non-Magnetic Watch Company was dissolved as a corporation, and the complainant was appointed receiver, by a decree of the supreme court of this state, and that by force of the decree,and the statute upon which it proceeded, the complainant, as receiver, became vested with all the estate, .real and personal, 'of the dissolved oorporation, including its· property in the inventions described in the several letters patent. The defendants have demurred to the bill, and insist by their demurrer that the complainant cannot maintain the action, because it does not appear that there has ever been any assignment to the complainant of the patents by the Non-Magnetic Watch Company. His argued in support of the demurrer that no interest can be acquired in letters patent except by an instrument in writing, under section 4898 of the Revised and in support of this contention the cases Statutes of the are cited which hold that the legaltiUe to a patent does not. pass by a sale of the patent upon an execution against the owner, or to his assignee in .insolveney by an .assignment. of his property by the. court, or by a general assignment of all his. property to a trustee for the benefit of creditors, or by the appointment of a receiver of the. estate of an insolvent debtor·. For .the purposes of an action like the present,it is quite immaterial whether the complainant acquired or did not acquire the legal title to the patentl! in suit.. If he did not, inasmuch as the corporation became extinct by its dissolution when he was appointed its receiver, no one else can acquire legal title, and for all practical' purposes any· title which did not vest in the complainant is extinguished. But the Mmplainant acquired all the equities of the dissolved corporation. That being so, he can maintain anactiQn against one having the. legal title to. the patent, in which it is alleged that the title of the defendant is subordinate in equity to the title of the complainant, and in· which the relief BOught is to compel the defendant to execute a conveyance of the patents.
FEDERAL REPORTER,
vol. 45.
All the parties are before the court who have any interest in such a controversy. ,Whether the complainant could maintain an action for the infringement of the patents, in which of course he would be obliged to show legal title, is a question which does not'arise, and need not be considered. The demurrer is
FIELD
et al. v.
THOMAS
(Circuit Court, D. Rhode Island, January 17, 1891.) 1.. PA.TBNTSPOR· INVBNTION's...:.EiAFErY-PINS-ANTICIPA.TION.
Letters patent No. 236,149. graqted January 4,1881, to Hellry C. Field for an provement in' safety-pins, oonsisting of a guide to prevent the pin from passing through the shield. was not anticipated by any prior device. and the improvement was patentable· A safety-pin with a guide differing only in form is an infringement.
.
. 2. BA.ME-INl!'RINGBlIIBNT.
In Equity. Wilmarth H. Thurston, for complainants. Edwin H. Brown, for defendants. COLT, J. ,. This is a suit brought for infringement ofletters patent No. 236,149, dated January 4,1881, granted to Henry C. Field for an improvement in' safety-pins. The Field improvement. consists in providing the head or shield with a guide. The claim is as follows: "In a safety-pin consisting of a pin provided with a shield to protect its point, the guide, C, substantially as shown, and for the purpose specified." The defenses relied upon are anticipation and non-infringement. The prior art does not disclose any shield with a guide like Field's. It must be admitted, however, that the improvement covered. by the Field patent is a narrow one, but I think the device was an improvement 'over what existed before, and that it was patentable. Safety-pins with shields open on one side· and on both sides existed before. The object of the Field device was to prevent the point of the pin passing through a shield whioh is open on both sides, and this is done by means of the guide. Thisls not shown in any prior device. The pin described in the Johnson patent of November 2, 1858, does not contain the Field guide, and it appears that the Johnson pin never went into use. The organization of ,the Johnson pin is quite different from the one in suit. Holding the Field patent to be valid, I think the defendants' pinia clearly within the patent. There is nothing in the patent which limits the claim to the precise form of guide shown. In the Field, device, the guide is made integral with the shield, and this is not true of defend ants' pin. But this is a mere change of form, therefore the defendants· pin infringes the· Field patent. Decree for· complainants.