660
,1
RDERALRllntORTEB,
vol. 48.
the preslmoe of the reassignment; even if rightfully upon the record,can ,at'allatreetthe decree. By the'assignment to the English company the icomplainant lost all right to an injunction, and, by virtue of the assign. ment the English company' did not acquire the right to an junction, and never possessed it. It is argued with force that what: the English company did not have it could not assign, and that the complainanttook nothing py the reassignment , so far as the decree is concerned, ;which it did not possess·' It is not necessary, however, to deci<;lewhethel: the reassignment invested complainant with the lost right to"Ul injunctionf for the!reason that I am constrained to hold that the reassignment is' not properly before the court. Should an injunetionbe'neeessary hereafter {orthe protection of the complainant, it will .not, bEl ,ditijqult upon proper'showing, either in this or action, .to obta.in,this relief. The complainant is entitled to a decree for anaecounting,.· but. asa disclaimer was filed pendente ,lite, (ReV. St. § 4922,) cit must be without oosta.
ARnl',IQIJ,L SWNE. PAVING
Co.
fl. STARR
d. ale
N. -P.qawornta. December
1891.)
Astbeoonstitutlon of. the United States and tbe legislBtioliofcongress have giVen the, national government e;ltclusive'control of the subject of llatel).tB, state statutes of limitations do not apply to sllits tor infrinltement, even iIi the i\bsence of any natlonalBtatute of Umitat.ionll applioable tbereto. :.
AJ Suit by the California Artificial Stone Paving Company A. Starr .andothers for infringement of a patent. Plea of against the state stJJ.tute of limitations, and. demurrer thereto. Demurrer SWltRined. .... . . . .Edm'Ulll.,d TaUBZ1cy,. for plaintiff. for. defendants. (01'ally.) ,This isa suit at law to recover damages for analleged,iJ,l,fringementpf a patent. Defendants, in their answer, plead t;b.e,.statute of limitations of the state of .California. Plaintiff demurs t.Q portion of the answer, and also moves to strike out the pleas settjIlg up the statute of limitations. The judiciary act provides that the circuit conrt shall have original jurisdiction "of all suits at law or in :equity arising under the patent or copyright laws of the United States." S.§ 629,supsec. 9. It also provides that "the laws of the Rev. St. several states, except whfllre the constitution, treaties, or statutes of the United States otherwise. require or provide, shall be regarded as rules of decision in trials at common law inthe.courts. of the United States, in easel! where they apply.·" Rev. U. S.§ 721. Under this section, is the sf.4!,te .statute of llinita.tions applicable to patent cases? ,This qUe&-
at.
CALIFORNIA ,ARTIFlCIAL STONE PAVING CO. 'IJ. STARR.
561
tion, it seems, has never been decided by the supreme court of the United States. There are, however, numerous decisions in the several circuit courts, but they are not uniform upon the subject. The greater number of the decided cases, and,in my opinion, the weight of reason, is to the effect that the state stat.utes have no application to such cases. In Read v. Miller, 2 Biss. 14, McDoNALD, J., in support of this view, said: . .. The cQnstitution of the United States has given to the national government exclusive control of the whole subject-matter of patent.rights for new and useful inventions. No state, therefore, can pass any valid law concerning thpm·. It is not any state la"" nor even the common law, thatauthorizes 'the-aetl.on \lnder consrderation. It Ii! given by the act of congress Of July '4, 1836. And this act, as I constl'ueit, gives the United States circuit courts exclusive jurisdiction over the whole subject.matter. No state court can adjudicate upon,tJ:!e question of a.violatlon of a patent.rigbt.· Questions touching these rights may Incidentally arise in the state courts, and be decided by them. But, I repeat, no state court can try a case like the one now under consIderation; . The policy:Of the national government in thus putting the for new and useful improvements and inventions under the clolngress and the UnJted States courts eVidently was to provide a uniform·rule concerning the same throughout the United States, so that everywhere have the same rights and tne'same remedies. And this is eminently proper, for the whole SUbject is one not of local, but of ,Bllt no s.uch policy is deducible from section 34 of the judiCiarYl&ct. Indeed, that plainly indicates a contrary policy, for, in regard to the.matters which it embraces, it destroys the uniformity of the rules ofdecisiollin the national courts, and requires them tl:> conform to the laws states. however various and, contradictory those laws may be. Since, then, no state has any power to legislate concerning and no state court has jurisdiction to adjudicate concerning a violation of them" jt'can hardly be supposed' that a state may nevertheless pass statutes of litnitation concerning them which shall control national courts concerning their infringement. It ought not be presumed that the state legislature, in passing a statute of limitations, ever intended it to extend to patent-right litigations, since such litigation cannot arise in a state court. Nor ought the presumption to be indulged that sectlon 34 of the jUdiciary act could have been intended to authorize state legislatures to pass statutes of limitation 011 subjects over which the states have no control. Moreover,it should be noted that section 34 of the judiciary act only makes the laws of the several states rUles of decision in the national courts' in cases where they apply.' Now. it me that these state laws do not apply incaSes over which the state governments have no control whatever, and which are under the exclusive control of 'tile general govern ment."
.This decision was rendered in 1867. Congress, in 1870, passed an act providing.a limitation for the commencement of such suits. 'This act was repealed in 1874, and there is not now any national statute upon tbe"subject. In 1883, LoWELL, J., in Hayden v. Oriental Mills, 15 Fed. Rep. 605, decided that state statutes were applicable to patent as well asother cases. His opinion is by far the ablest delivered in favor of that view; but it is not sustained by the more recent decisions. The upon this su bject are nearly all cited in 3 Rob. Pat. § 890, and Walk. Pa,t. § ,477. In Mc.Ginnis v. Erie Co., 45 Fed. Rep. 91, in v.48F.no.7-36
. :,.::'.
, FEI)ERAL
REPORTER, voL 48·
,the circuit court of Pennsy 1va:nia., 'decided in December, lSg0, the judges a state statuteoflimitittions' is not pleadable in bar of an action 'at law for infringement of a patent;, following previous decisions in ,thatcirouit, and citing the late in other circuits in support of the pleas of the statute of ·that view. The demurrerissuslained', limitations will be stricken out. " ' .'.. ,,
BA.G MACSINE ,&
,& WBITNEYCo.
t1. HOLLING$WORTH
(Circuit Court, D. Massachusetts. December 12, 1891.)
L
,
,PJ.TJIlftS YOH INVlIlNTIONS....INFBINGBlIIBNT-O--PAPER·BAG 'U'AomNEBY.'
S&7,ll6Ii, iS8l:1lldMvohl6,1S86, to'Lorenz and HODisl for an mal1hinery, deeigned to maqufactureoontinuol1s tucked paP,flrtubing paper blanks, with' diaulOnd.foldedends, th" claim for a recip. rocating carnage tosup-port the and, by its forward and backward movemeut, to,OO'Operate in'regulating the ,working of other parts of: the mechanism, is not infrInged by a in ,whioh the, same is by a revolv· ing carriage.
a.SAME.
The, cla11l1 for pivoted fingers, combined with aeoUel!. ,dlstend them, ,theftng,erl ',being deSigned, to" entel',W,I1,.lle di!ltended, the forw"rdend of the tube, , and upwar4 andbackw.ard tJ;lroUgh an arc of 180 degreel,oarrying the upper fo14 to ,a fillt completlpg the 4iamond.shaped fold, infringed by a machine with fibgel'swhich, while closed, enter the tube, and then operate merely to lift up the'Upper fold thereof, While the side folders press in the sides of the tube to the proper sbape. ' "
"
,"
InEquity. Suit by the New Y:ork Paper..:Bag Machine & ;Manufacturing Cprnpanyagainst ,the Hollingsworth & Whitney Company for infringemeil,tQf a pate,nt,' ,. , . ' Albt1:tHr'Walker for complainants. T. Ohamber8 and George Harding, for defendants;
n.'
this easelsTheplll,intiffs ,claim that a by the manuf'aqtu.,.Jeo{pa,per b.ags ,i8,a,n." c.,nt, of plaintiffs' ,patent 837 ,965, W Loreljz Honiss, ;March 16; l886, is for new and useful improvements in paper-bag machinery. ,The .patented continuous tubing machinery ;s, designed to paper,blsnks with diamond-folded enns. "fhepaterifcovers various 'combinliti:Onsof the following partS, namely, a pairof'pivoted 'fingers to hold them apart, are,sl,'de gr . .i,pe:s, The cortta1ns five of whICh 1S for the comblOfibon of the the coiled spring. , 'Tbe others are for diflerent combinations of the various parts,· b,l1t, all contain itselemenls either the fingers, or tbereciprocating carriage, OJ;' b.oth. ThQ only elements in the 'patent which are new" are the firigei's'llhdspi-ing,and.the reciprocating