l'USEY 4t JONES CO. II. MILLER.
401
PUSEY & JONES CO. v. MILLER et aL (Circuit Court, D. Delaware. No. 153. A bill of interpleader against two defendants which shows on its face that one of the defendants has no claim, either legal or equitable, to the . debt due from the complainant is demurrable. 2. PATENTS FOR INVENTIONS-LICENSE-RIGHTS OF Co· OWNERS. Where a patent is owned by several parties, and one of them Issues a license to a third person, the other owners have no claim against the l1censee for any part of the royalty, their remedy, If any, being by suit against the licensor for an accounting.
April 30, 1894.)
1.
INTERPLEADER-BILL-DEMURRER.
In Equity. Bill by the Pusey & Jones Company against Mary Ann Miller and Will W. Bierce. Benjamin Nields,for complainants. Branch Giles and E. Clinton Rhoads, for defendant Miller. WALES, District Judge. This is a bill in the nature of a bill of interpleader, by which the plaintiff seeks protection and relief from the demands of the defendants. The material facts in the case a.re these: Mary Ann Miller, the executrix of Lewis Miller, and one of the defendants herein, has brought an action at law in this court against the plaintiff to recover the sum of $3,000, which is alleged to be due to the estate of Miller under the terms of a written contract be· tween him and the plaintiff, dated January 14, 1892, whereby the plaintiff had agreed to pay to Miller that amount of money, as a license fee or royalty, for the right to construct a patented Taylor cotton press for Will W. Bierce, of the state of Alabama. The further sum of $212.40 is claimed by the executrix as a balance due to her husband's estate for royalties on other cotton presses built by the pla.intiff. John F. Taylor, being the inventor and"sole owner of all the patents covering what is known as "Taylor's Steam and Hydraulic Cotton Press," on the 23d of January, 1877, sold and assigned to Lewis Miller and William Boardman, each, one·third interest and share in and of' these patents for all of the United States, excepting certain territory specifically reserved to the as· signor. Prior'to the making of this assignment, which was duly recorded, the parties named therein had, on the 19th of December, ment (tripartite), wherein it was 1876, entered into articles of agre stipulated, among other things, that Boardman, in consideration of the assignment to him of a one·third interest in the patents, would advance to Taylor the sum of $25,000, and would also furnish to I.ewis Miller such sums as the latter might require "to enable him . to carry on the business of the concern." The advance of '25,000 to Taylor was to be reimbursf'd to Boardman. hy Taylor out of his one·third Of the' profits. Miller, by way of payment for the one-· v
third interest of the patents to be transferred to him, was to devote his time, and, energy to the building,' and using, 'Or otherwise the in!eHtions or patent "rights. It. was further agreed 'that ' 'profits 'to t be derrtre/l' from the busmess should be shared equally between the parties, and that the losses s.ust.a.l.·ne ... Sh.oUld. be born.e. in like ..d ortion. . I I F..· T.aylor, OJ! July2Q" sold an4> assigned to ,Will w. of the'deremaining.one-third interest in the cottQn-press patents, and at the same time transferred to Bierce his shate'of;"all debts and claims, owing or unpaid, or which at any time might become due tohim,,'unqer the agreement of December 19,'1876,"from. Lewis Miller'a;#d;'Wi,lliam Bqatdma;n, Or eiffi.er of them, .their, or eitMr of their, estate's. 'Miller and Boardman had both died 'before the date of the assignment from Taylor to Bierce. WillWLBierce isiridebtedto the plliintiff in the sum of $9,901..41, with interest thereon, being a balance due and unpaid on a Taylor cotton press furnished by tq. . aijd which the .latter plaintiff ,deduct. the $um of $3,212.4t), claimed by Bierce as the assignee of Taylor. Bierce; 14S .. . a., i.,g.n . . . of.,Ta.!Y.lor, lla.lilla () br;O u. gb.,.t, as!uit in. . . . y, in the Ann ou.rt of No. -',-.-.', Mary {fie' of I Jiewis :M:iIlel;'and Boal'l1mari, 'the wlllHitri Boardttlan, for aQjtccouni!ng of the . ,e.. d.. q.y: .th.e.,,!!.e.s.t.R.,.t..es WhiCh.. 'Cti.V.ely.,re. by of the ·l;lSSlgnment of 1871",' In 13ierce alleges that Miller 'and, 'profits ,patents, ,. to the . t1.ltrcl but that neither ])fillernor Boardman had ever rendered a.p..r account to Tayor ,:Prior to the bringing of the action aga,fnst C<?mpanyby Mille),"s executrix, Bierce had noti.fled the c0'¢1J,aqy tp,at of claimed by the executrix, and for now belonged to him" and cautioned the . company not 'tQ,Pay the aame to the executrix. ,', The Pusey & Jones (j<;>mpanynow and willing .to, pay the said IilUlll ,of. $3,212.40t<;>MiUer's executrix, or to account for. the same to Will W. therefore prays that the decreed,.to interplead, and settle between themselves rights or claims, and that in the mean time .the executri,x: Q,tMiller may .be enjoined from prosecuting her action against the.coIJ,tpany. Miller, the executrix, has appeared by a geMrlJ,1 demurrer to the pll;lintiff's bill. . The couIlsel, and subpoena, was non est as to Bierce, and there has been no appearap.ceJp'f, pim., . .. , . The pi a bill. ,Qf interpleader. is to cOIIlpel. the claimants ()f the debt, or duty froIIl the party liable therefor, to litiga.te" tl;l¢ir .x1eapective" between themselyes;. the ,party· liable under no independent to any of the claimants, :merely in the position of a stakeholder" without C.
PUSEY &'JONES CO. V. MILLER.
403
in the matter himself. A bill in the nature of an interpleader lies by a party in interest to ascertain and establish his own rights, when there are other conflicting rights between third persons; as where a mortgagor wishes to redeem a mortgaged estate, and there are conflicting claims between third persons as to their title to the mortgage money, he may bring them before the .court to ascertain their rights, and to have a decree fOol' redemption, and to make a secure payment to the party entitled to the money. 2 Story, Eq. JUl'. §§ 807-824. By the one bill the plaintiff seeks protection from rival claimants and a multiplicity of suits. By the other, he seeks relief, as well as protection. It is essential, in every bill of interpleader, that each of the defendants claims a right, and such a right as they may interplead for. If, in the facts set forth in the bill, it is evident that the claim of one of the defendants (there being only two) .is not such that it can be sustained on legal or grounds, there is no cause of interpleader. rd. § 821. And this requires that the claims of the defendants in the present. case should be investigated. On the contract of January 14, 1892, between Lewis Miller and the Pusey & Jones Company, there can be no doubt of the liability of the company to Miller's estate; and unless Bierce can show a superior right to the money in controversy, 01' a well-founded legal or equitable claim to it, the plaintiff's bill cannot be sustained. Bierce, as assignee of Taylor, is the owner of whatever rights were held by the latter, at the time of the assignment, in the cotton-press patents, and to the profits derived from them, under the partnership articles of December 19, 1876, between Taylor, Miller, and Boardman. As between the three partners, Taylor was undoubtedly entitled to one-third of the income from the patents during the existence of the partnership; but when that partnership was dissolved by the death of Boardman, on July 14, 1891, the mode of division provided for in the articles came to an end, 'l'here was no provision in the articles for a continuance of the partnership after the death.of anyone of its members. As far as can be gathered from the bill and exhibits, the partnership was a s .'cret one, and had never transacted business, as a firm, with third parties. The cotton-press patents were not, and had never been, owned or operated by the firm. The interest in the patents which ,vas owned and held by each member of the firm was his own individual and separate property, and constituted no part of the firm's assets; and, immediately upon the dissolution of the firm, each one of the surviving members was no longer accountable to the other, as a partner, for a division of the profits which he might thereafter make from the working of the patents himself, or by issuing licenses to others to use them. Such being the relation of 'raylor and Miller to these patents, on January 14, 1892, and longafter the partnership had ceased to exist, it becomes pertinpnt to inquire what right or interest Taylor could have in the royalties which the Pusey & Jones Company contracted to pay to Miller, and on which the executrix of Miller has now brought an action against the piaintiff in this bill. It is unnecessary to consider the extent
404
i'El>ll:RAL .REPORTER, ·vol.61.
of Miller's accountabilltJl':, to:: Tay:lor for moneys received. by 'the i during the partnership. r.rh.e debt- in oontI'overs;y: 'between the defendants was incl1rred after, the partnership had ended, when TaJI6r rand Miller had become . nothing more than cO'-owners; or tenants. in ·common, of the patents; each being. at to use his property, at his own discretion, for his own profit and ad",antage, with a> possible liability to account for royalties if one should receive DJ,ore than the other. ffhe rights and liabilities of the coowners, of a patent, when not modified by contract or agreement amongtheIIlselves, in respect to royalties received by them, in the light of all the authorities on the subject, may be stated thus: '''here a patent belongs to several persons in common, each co-owner can assign his share,and sue for an infringement, andean also work the patent himself, give licenses to work it, and sue for royalties its use, and is entitled to retain,for his own. benefit,. whatever profit he may derive from the working, although he mayr'be liable to account for what he receives in respect of the license$; , 1,Lin,dl. Partn. 62; Sheehan v. Railroad Co., 16Cb. Div. 59; Mathers.v.. Green, L. R: 1 Gh.App. 29; Clum' v. Brewer, 2 Curt. 506, Fed. Cas. 2,909; Cu'rran v,Burdsall, 20 Fed. 837; Manufacturing Co. v,'(}ill,32 Fed. 697; De Witt v. Manufacturing Co., 66N. Y. 462; m. App.628; Hall, Pat. Est. 75. In Dunham v. Gates V. RailroadrCo., 2 Ban. & A.. 327, 'l Biss. 223, Fed. Cas. No. 4,151, it was said1'by > Judge Drummond that, where a party owning less than the whole of the thing patented makes a grant or license un· del' the patent, it would seem the better rule to hold, if there is auy liability/at all, that he shalt be answerable to the others, rather than the other patentees shall look to the grantee or licensee. In Curran. v.> Burdsall, supra, the court held that, if. one of several joint pa:tentees > assigns to a third partY,the estoppel upon the assignor nl'ust work a Ucense to the assignee to use the patent, and the joint owners of the patent must look to the one who assigns, for an ao'counting. The rule deducible .from the authorities would seem to be .that the license of one or more of several owners in common of a patent confers a right as against all, and that the remedy of the other tenants in common, if they have any, is by a suit for an account fOfwhutever may have been received by them. In other words, the licensee of a patent held by two or more co-owners is liable to his licensor only, and not to the other co-owners, for license fees or royalties, unless it is otherwise stipulated in the license. All of the items contained in the bill of particulars filed by the plaintiffjn the pending action of Miller's Executrix v.ThePusey & Jones Company are for debts incurred after the dissolution of the partnership between the owners of the cotton-press patents, and to none of which could Taylor, or his assignee, have any claim. The Pusey & Jones Company became indebted to Miller under an independent contract with him in respect to the patents, and the company is responsible only to Miller's estate for whatever may be due under that contract, as well as under other agreements made with Miller after the dissolution of the partnership. The argument
NOVELTY MANUF'G CO. ,tI. WEEKS.
405
of the demurrer by counsel took a very wide range, but in my view, without adding any others, .sufficient reasons have been assigned for dilmissing the plaintiff's bill, with costs, and it is so ordered.
PHILADELPHIA NOVELTY MANUF'G CO. v. WEEKS. (Circuit Court of Appeals, Second Circuit. .No.95. 1. PATENTS-LIMITATION OF CLAIM-INFRINGEMENT-STAPLING MACHINES.
April 19, 1894.)
The Heysinger patent, No. 226,402, for a stapling machine for flling and binding papers, must be limited, in view of the prior state ot the art, to the specific structures described and claimed; and its claims covering a clinching base, a staple driver, and both in combination, are not infringed by an apparatus which lacks a part of each device either expressly incorporated in the claims, or described in the speCifications as essential. 52 Fed. 816, affirmed. Altering the slots of the guide clip of a stapling machine so as to permit the staple driver to be inserted both crosswise and lengthwise, or so as to give sufficient room to drive a staple with a. projecting eye, does not involve invention. 52 Fed. 816, affirmed. The Heysinger patent, No. 274,941, for a stapling machine, is void for want of invention. 52 Fed. 816, affirmed.
2.
SAME-INVENTION.
3. SAME.
Appeal from the Circuit Court of the United States for the Southern District of New York. This was a suit by the Philadelphia. Novelty Manufacturing Company against Albemus A. Weeks, for alleged infringement of letters patent No. 226,402, dated April 13, 1880, and No. 274,941, dated April 3, 1883, both issued to Isaac W. Heysinger, and relating to what are known as "stapling machines," being small tools for inserting and clinching wire staples near the edges of superimposed sheets of paper. The circuit court dismissed the bill (52 Fed. 816). Complainant appealed. Augustus B. Stoughton, for appellant. Hector I. Fenton, for appellee. Before WALLACE, LACOMBE, and SHIPMAN, Circuit Judges. LACOMBE, Circuit Judge. The apparatus described consists of two separate tools. One of these is a staple driver, consisting, essentially, of a flat tube containing a flat blade movable therein, the open end of the tube receiving a staple, crown upward, which is ejected from the tube or staple case by a blow on the end of the blade or plunger, and thus the staple legs are inserted or driven through the mass of papers upon which the mouth of the staple case is superimposed. The other tool is a clinching base, which clips the paper between a slotted guide arm and a base containing a clinching cavity beneath the slot in the guide. The tools are to