American Bank Protection Co. v. City Nat. Bank of Johnson City, Tenn.

• Decision Date: 07 October 1909
• Citation: 181 F. 375
• Parties: AMERICAN BANK PROTECTION CO. v. CITY NAT. BANK OF JOHNSON CITY, TENN.
• Court: U.S. District Court — Eastern District of Tennessee

181 F. 375

AMERICAN BANK PROTECTION CO. v. CITY NAT. BANK OF JOHNSON CITY, TENN.

United States Circuit Court, E.D. Tennessee.

October 7, 1909

Paul &amp Paul and Webb & Baker, for plaintiff.

Harr &amp Burrow, for defendant.

SANFORD District Judge.

1. Defendant's preliminary motion to dismiss the bill, in effect for want of title to the patent in suit, must be denied.

This motion denies complainant's right to the relief sought, partly on account of matters shown in the proof, and partly on account of matters shown by affidavit. The defense goes to the merits and cannot, in my opinion, be made by motion based on affidavits, but presents an issue of fact to be determined, on the merits, under the pleadings and proof in the case as any of the other issues in the case. This is not a case where the bill may be dismissed on motion under the doctrine of Mast, Foos & Co. v. Manufacturing Co., 117 U.S. 487, 20 Sup.Ct. 708, 44 L.Ed. 856, but falls, at least by analogy, within the rule laid down in Snow v. Sargent (C.C.) 106 F. 230, that a Circuit Court will not entertain a motion by defendant to dismiss a bill for infringement filed before a hearing and based on affidavits relating to matters of fact going to the validity of the patent or the question of infringement.

2. The defendant's motion to suppress the testimony of complainant's witnesses Mountford, Houghton, and Carter, and its objections thereto on the ground that the same were not proper rebuttal testimony, must likewise be overruled.

While it may be that a large part of this testimony was properly proof in chief, yet, after same had been taken, the defendant did not move to suppress this testimony on that ground, but, on the contrary, applied to the court for leave to take proof in surrebuttal, which was granted by Judge Clark. Since such testimony has been taken by defendant, I am of opinion that it is now too late to move to suppress the complainant's testimony or to object to same on the ground that it was not properly taken in chief, and that the court should not, in the exercise of its discretion, at this stage of the case, sustain the motion to exclude, or the objection to the testimony.

3. After careful consideration, I have reached the following conclusions as to the merits of the case:

(1) The complainant has proven title to the Robinson & Green letters patent, No. 708,496, in controversy in this cause. The complainant in the original bill is clearly the corporation styled 'American Bank Protection Company'; the word 'the' being no part of its name, as shown by the caption of the bill and the signature of the complainant thereto, and this word, while used as an introduction to the first paragraph of the bill, being obviously merely the definite article grammatically required to begin the sentence and not alleged as part of the corporate name.

The complainant was incorporated on November 5, 1901. On November 9, 1901, Robinson & Green assigned their invention to this complainant by written assignment acknowledged the same day, but not recorded in the Patent Office until August 6, 1906. The patent was applied for on November 26, 1901, and issued to Robinson & Green on September 2, 1902. On July 2, 1906, Robinson & Green assigned and transferred to the complainant all their right and title to the invention and letters patent, and 'in and to all claims for the past use and infringement of said letters patent to the full end of the term for which said letters patent was granted. ' This assignment was acknowledged by Robinson on July 10, 1906, and by Green on July 20, 1906, the same day the bill was filed, and recorded in the Patent Office on August 6, 1906.

I am of opinion on these facts that the assignment of November 9, 1901, operated to convey the equitable interest in the invention to the complainant, but that on the issuance of the patent in 1902 the legal title thereto was vested in the patentees; that the assignment of July 2, 1906, conveyed the legal title in the patent to the complainant with a specific assignment of all claims for prior infringement, all claims for subsequent infringement passing necessarily by the assignment of the legal title in the patent; that the certificate of acknowledgment is, under Rev. St. Sec. 4898, as amended by Act March 3, 1897, c. 391, 29 Stat. 692 (U.S. Comp. St. 1901, p. 3387), prima facie evidence of the execution of the assignment on the date the assignment bears date; and that the assignment of July 2, 1906, took effect from the date of its execution on July 6, 1906 (Murray Co. v. Gin Co., 149 F. 989, 79 C.C.A. 499 (C.C.A., Third Circuit), and cases cited), vesting the legal as well as the equitable title in complainant prior to the bringing of this suit.

There is, furthermore, no evidence that complainant has ever transferred its title to another corporation by the name of 'The American Bank Protection Company'; the affidavits offered by complainant not being competent as evidence on this point, and furthermore not establishing such transfer as an accomplished fact, as distinguished from a mere intention of future transfer.

(2) I am of the opinion that the subject-matter of the invention does not relate merely to an alarm gong mechanism adapted in itself to operate as a complete burglar alarm or protective system-- for which purpose it would have no patentable utility-- but that it relates to improvements in alarm gongs for electric burglar alarm systems adapted to application to safes, vaults, and other receptacles or apartments for the storage of money and other valuable articles, by a combination of devices for protecting the gong of such burglar alarm system; that, while it does not relate to any of the other parts of the system than the gong and its protective devices, it is intended to be used in connection therewith; that it is directed towards the means by which the alarm gong of such a system of vault protection is itself protected from injury or interference, and specifically contemplates the alarm gong of such a system upon the outer wall of such vault or receptacle, connected with an electrical circuit-closing device, with a specially constructed protective shield arranged over the alarm gong and electrically connected with such circuit-closing device and bolted to the outside of the vault or receptacle in such a manner that an attempt to disturb or raise the shield will result in a movement of its mechanical fastening by which the circuit will be closed and the alarm sounded, with the additional features of constructing such supporting bolt for the shield in the form of a tube serving as a conduit for the connecting wires leading from the electric gong to the interior installation, and of connecting the shield and alarm gong to opposite sides of the circuit, so that the introduction of a wire through the perforations of the shield for the purpose of disabling the gong will result in a closing of the circuit and the sounding of the alarm.

(3) In...