ADlUANCE, PLATT & CO.
v.
M'CORmCK HARVESTIXG MACH. CO.
287
ADRIANCE, PLATT & CO. v. McCORMICK HARVESTING MACH. CO. (Circuit Court, N. D. New York. 1. PATE:'<TS Fan INVENTIONS CONTUACT.
October 13, 1892.) SUITS
SUITS Fan IKFHINGE)IENT -
FommED
ON
The owners of cel·t:lin patents granted to complainant the right to make, use, and vend the patented machines in specified territory 01' thf> lluited States, flIHl also, far as they could control the same, tll(' exdusive right to make the Ilateuted machines for sale in Australia, and South America." Thereaft8I' the owners conveyed all their right in the patents to defendant, SUbject to the rights of the plainant, from which time complainant paid to defendant the royalties umIer its lice12se. Subs!'quently complainant sued defendant to restrain it from manufacturing machines under the patent, for sale in Europf>, Australia, amI South America. Helll, mat undeL' the conveyance to it dcfendant assumed no contr'ilct relation with complninant, :md thereafte!' tilt' snit was not founded upon the contract, but wa::; an ol'dinary snit ftJl' infl'lngellll'nt of a patent. In a suit in which the jmisdictian of the dl'cuit court is founded 'wholly or partly Upllll the patent laws of the United n cOl1)oration organized under the Irnvs \)f another :-.tate Can!lOt be sued in a state when" it does business by a citizen of a third state. Shaw v. Mining Co., 1::.l Snp·. Ct. Hep. 93.), 14;; U. S. 444, followf;d.
2.
SAJ{B;-JURlSDfCTION OF FEDERAL COL'RTS-DrsTRIcTS.
In E.quity. Bill by Adriance, Platt & Co. against the McCormick Harvesting Machine Company for infringement of certain patentH. On motion for preliminary injunction. Denied. Oeo. B. Selden, (Chambers & Boughton, of counsel,) for complainant. John E. Brandeger, (R. L. Parkinson, of couns for defendant. l,) WALLACE, Circuit Judge. The motion for a preliminary injunction must be denied, because, irrespeetive of any other considerations, the jurisdictional objection raised by the defendant ii'1 fatal to the suit. The bill aUeges that certain letters patent of the United States for inventions in harvester and grain binding machines were granted to one Severance, the inventor; that Se\'crance thereafter cDnveyed a two-thirds interest therein to Adsit and Baldwin; that thereafter Severance, Adsit, and Baldwin, being then the owners of aU the patents, granted to the complainant. upon the condition of the payment of a royalty of five donal'S on each machine, the exclusive right to mal,e, use, and vend the patented machines in certain specified territory of the United States, and also, so far as they could control the same, the exclusive right to build the patented machines for sale in Europe, Am:tralia, and South America; that thereafter the said Severance, Adsit, and Baldwin, being still the owners of the patents, transferred an their right, title, and interest therein to McCormick, subject to the rights of complainant under the license; that thereafter McCormick, being then the owner of the patents, granted and conveyed to tllp defendant the exclusive right to make, use, and vend the patented inyentions throughout the United States, I'lubject to the rights of the complainant; that since McCormick became the owner of the
288
FEDERAL REPORTER,
vol. 55.
patents the complainant has always paid him the royalties secured by the license agreement with the original owners, among them the royalties on all machines made by complainant and sold in foreign countries; and that the defendant, in violation of the complainant's exclusive rights, has made and sold machines containing the patented inventions in England, :Brance, and Germany, and threatens to continue so to do. The prayer for relief is for an injunction and an accounting. Upon the hearing of the motion there seemed to be reason to doubt whether the suit was not founded on the breach of contract between complainant and the original owners of the patents set forth, to which McCormick and his licensee, the defendant, had subsequently become parties. But an examination of the bill shows that neither McCormick nor the defendant has assumed any contract obligation to the complainant, and, notwithstanding what has taken place between the original owners and McCormick, and between McCormick and the complainant, and between McCormick and the defendant, upon the facts set forth the cause of action is the ordinary one for infringement of a patent, in which the complainant must establish his right in the usual way, and to which the defendant is at liberty to interpose all the defenses which exist in an infringement suit. It is in no sense a suit to enforce a contract, either specifically or by enjoining a breach. It follows that the jurisdiction of this court is not founded "only on the fact that the suit is between citizens of states," within the terms of section 1 of the act of congress of )Iarch 3, 1887. Jurisdiction is also founded on the fact that the suit arises under the laws of the United States. 'rhe defendant, as a corporation of the state of Illinois, is not amenable in such a suit to the process of this court. Shaw v. Mining Co., 145 U. S. 444, 12 Sup. Ct. Rep. 935. Injunction refused. ADHlANCE, PLATT & CO. v. McCOR-:lHCK CO. Pot al. MACH.
(Circuit Court, X D. lllinois.
:March 24, 1893.)
1.
PATENTS FOR INVENTIONS-INFRINGEMENT SUITS-PARTIES.
A licensee may prosecute in his own name suit for infringement of a patent where the defendant is the owner of the legal title to the patent; citing Littlefield v. Perry, 21 Wall. 205.
Cor'TRACT-CONSTRUCTION OF-AMBIGUITY.
It is only a latent ambiguity, which may be explained by evidenco aliunde. Doubts apparlmt upon the of an instrument must be resolved by the court, resorting, if necessary, to the rule that a grant in doubtful words shall be construed most strongly against the grantor.
3.
PATENTS FOR INVE1'iTIONS-LICENSE FOR SALE IN FOREIGN COUNTRIES.
In addition to the grant of an exClusive license to manufacture and sell in certain specified parts of the L'nited States, the license in this case contained the following clause: "And" so far as we can control the same, the <:'xclmdve right to build harve!'lters and binders, under the rights herein granted, for !'aJe in Europe, and South, America." Held tnat, fairly and reasonably cOllstrued, this language conferred upon the licensee