Rehearing
Denied October 27, 1921.
This is
an appeal from a decree dismissing on appellee's motion
appellant's bill for alleged infringement of patent No
1,033,142, July 23, 1912, to Reed Manufacturing Company
assignee of the inventors Wright and Howard, for a machine
for forming screw thread-cutting devices.
In the
bill, commendable for its brevity and directness, appellant
alleged: (1) That Wright and Howard made the invention and
filed their application, on which the patent was issued to
Reed Manufacturing Company; (2) that Reed Manufacturing
Company, owner of the patent, 'prior to the beginning of
this suit,' by a duly executed assignment in writing
(attached to the bill as 'Exhibit A'), transferred to
appellant the right to exclude appellee from practicing the
invention and the right to recover all claims in law or in
equity arising out of appellee's infringement of the
patent; (3) that the devices of the patent, made by Reed
Manufacturing Company and by appellant, have been duly marked
'Patented, July 23, 1912'; (4) that appellee has
infringed the patent within the six years last past by
making, using, and selling devices containing the inventions
claimed therein
that appellee had been notified of the infringement, and that
the infringement has damaged appellant and profited appellee
and prayed for an injunction and an accounting of
appellee's profits and appellant's damages.
Exhibit
A is as follows:
'Whereas,
Reed Manufacturing Company, a corporation of Pennsylvania,
is the owner of letters patent of the United States, No.
1,033,142, for a machine for forming screw thread-cutting
devices granted July 23, 1912, on an application of Wright
and Howard; and
'Whereas,
under said patent said Reed Manufacturing Company has the
right to exclude others from manufacturing, using and
selling the devices of said patent; and
'Whereas,
it is believed by the parties that Crown Die & Tool
Company, a corporation of Illinois, has been manufacturing
and using devices an infringement of said patent; and
'Whereas,
Nye Tool & Machine Works is engaged in the manufacture of
dies with which the dies made by said Crown Die & Tool
Company, by the use of said infringing machine, are in
competition; and
'Whereas,
Nye Tool & Machine Works is desirous of acquiring from Reed
Manufacturing Company all of its rights of exclusion under
said patent, so far as the same may be exercised against
the Crown Die & Tool Company together with all rights of
the Reed Manufacturing Company against the Crown Die & Tool
Company arising out of the infringement aforesaid:
'Now,
therefore, in consideration of one thousand dollars
($1,000.00), and other good and valuable considerations,
the receipt of which is hereby acknowledged, the Reed
Manufacturing Company hereby assigns and sets over to the
Nye Tool & Machine Works all claims recoverable in law or
in equity, whether for damages, profits, savings, or any
other kind or description, which the Reed Manufacturing
Company has against the Crown Die & Tool Company arising
out of the infringement by the Crown Die & Tool Company
of the Wright & Hubbard patent No. 1,033,142; and, for
the same consideration, assigns and sets over all the
rights which it now has arising from said patent of
excluding the Crown Die & Tool Company from the practice
of the invention of said patent, the intention being
that, in so far as concerns the exclusion of the Crown
Die & Tool Company under said patent, the Nye Tool &
Machine Works shall be vested with as full rights in the
premises as the Reed Manufacturing Company would have had
had this assignment not been made; and that the Nye Tool
& Machine Works shall have the full right to bring suit
on said patent, either at law or in equity against said
Crown Die & Tool Company, and for own benefit, to exclude
the Crown Die & Tool Company from practicing the
invention of said patent, and for its own use and benefit
to collect damages which may arise by reason of the
future infringement of said patent by the Crown Die &
Tool Company, but nothing herein contained shall in any
way affect or alter the rights of the Reed Manufacturing
Company against other than the Crown Die & Tool Company;
and, for the same consideration, all rights as are herein
given against the Crown Die & Tool Company are given as
against any successor or assignee of the business
thereof.'
Appellee's
motion to dismiss the bill for want of equity apparent on its
face, in addition to challenging appellant's title and
right to sue, suggests laches, conspiracy, and pendency of a
prior suit, and also denies jurisdiction in equity over
damages 'recoverable at law.'
