California Electrical Works v. Finck

• Decision Date: 14 September 1891
• Citation: 47 F. 583
• Court: U.S. District Court — Northern District of California
• Parties: CALIFORNIA ELECTRICAL WORKS v. FINCK et al.

47 F. 583

CALIFORNIA ELECTRICAL WORKS v. FINCK et al.

United States Circuit Court, N.D. California.

September 14, 1891

Langhorne & Miller, for complainant.

John L Boone, for respondents.

HAWLEY J.

This is a suit in equity for the infringement of letters patent issued to George F. Pinkham, as assignee of Jacob P. Terrill the inventor, for 'an electrical gas-lighting apparatus.' Complainant owns the title of the patent, and has the exclusive right to make, use, and sell the patented article in the state of California. The Boston Electric Company owns the title, and has the same right to make, use and sell the patented gas-lighter in the state of Massachusetts. Complainant's grantor acquired its title prior to the acquisition of the title of the Boston Electric Company to the state of Massachusetts. Certain preliminary objections are made by respondents to a consideration of this case upon its merits.

1. It is claimed that the testimony shows that the inventor Terrill, made an assignment to one William R. Nutting, of Boston, Mass., about one year before the patent was issued, of all inventions in gas-lighting apparatus conceived or perfected by him during a certain period of time,-- covering the time of the issuance of the patent to Pinkham; that these facts establish an equitable title to the patent and invention in Nutting, although the legal title is in Pinkham; and that, inasmuch as Nutting is not made a party, the suit should be dismissed. No such defense or plea is presented by the pleadings. No objection of this character was made during the taking of the testimony. During the taking of the testimony it was admitted by counsel 'that at the date of the commencement of this suit, and at the times mentioned in the bill herein, the title of the patent sued on for the state of California was in complainant. ' When the assignment from Pinkham to the Boston Electric Company was offered in evidence, the allegations of the title in complainant's bill were admitted, and further proof thereof was expressly waived by respondents' counsel. Upon this state of facts it would be unfair to complainant to consider this objection. The facts referred to in this brief of counsel in this connection are, in my opinion, insufficient to warrant the court to reopen the case, and permit the withdrawal of the admission and waiver as to title. The objection is overruled.

2. It is claimed that there is no sufficient evidence to show that respondents have committed any infringement. This claim is sought to be maintained upon the ground that the only testimony of any sale made by respondents was of a sale to the complainant, and it is argued that the complainant cannot take advantage of its own wrong, etc. This contention cannot be sustained. Respondents, in their answer, state--

'That they constitute the firm of Will & Fink, and are engaged as partners under said name in conduction a large bazar and variety store in San Francisco, Cal.; that in the course of their said business they have purchased from the Boston Electric Company, a corporation doing business in Boston, Massachusetts, a number of electrical gas-lighting apparatus, and have placed them on sale in their said store, and have sold them to the trade in and about San Francisco, in said state of California.'

This, in connection with the other averments in the answer, is an admission of the infringement. Moreover, the testimony of one of the respondents is to the same effect. Respondents are certainly bound by the averments in their answer and by their own testimony. The case must be considered upon its merits. The answer alleges as a defense--

'That these respondents, in the ordinary course of trade, purchased said electrical gas-lighting apparatus from said Boston Electric Company, and paid the price charged therefor, and that said price included the royalties or patent fees demanded by said Boston Electric Company.'

Under the patent laws of the United States a patentee is granted the exclusive right to make, sell, and use his patented article, and may assign or grant this exclusive privilege to others to the whole or any specified part of the United States. Rev. St. U.S. 4898. When the patentee assigns the exclusive right to another person within certain defined territorial limits, he confers upon the purchaser the same rights and privileges within the limited territory which he previously had in the whole United States, and excludes himself from the rights of the patent within the assigned territory. The assignee has the right to make, use, and sell the patented articles within the territory assigned to him but he is not authorized under the patent law...