Colman v. American Warp Drawing Mach. Co.

• Decision Date: 12 August 1915
• Docket Number: 594.
• Parties: COLMAN et al. v. AMERICAN WARP DRAWING MACH. CO.
• Court: U.S. District Court — District of Massachusetts

235 F. 531

COLMAN et al. v. AMERICAN WARP DRAWING MACH. CO.

No. 594.

United States District Court, D. Massachusetts.

August 12, 1915

Horace Van Everen, of Boston, Mass., for plaintiffs.

Emery Booth, Janney & Varney and Charles D. Lanning, all of Boston Mass., for defendant.

DODGE Circuit Judge.

The bill charges the defendant corporation with infringing United States patent No. 1,115,399, issued October 27, 1914, to the plaintiff Colman, assignor to himself and two other plaintiffs. The three plaintiffs describe themselves as copartners, doing business as Barber-Colman Company.

The patent has 107 claims in all. Nineteen of them are infringed according to the bill, which seeks an injunction and an account.

The answer, not denying the issuance of the patent sued on, does deny that Colman was first inventor of the improvements covered by it, and denies that the patent was lawfully issued to him. It prays dismissal on these grounds.

All the above is contained in the first 28 paragraphs of the answer as filed under the head 'I. Answer.' These paragraphs constitute the answer proper. They are followed by 23 paragraphs under the head 'II. Counterclaim,' in which is set out what the defendant contends to be a counterclaim under equity rule 30 (198 F. xxvi, 115 C.C.A. xxvi). In them are recited at length successive proceedings had in the Patent Office, in the Supreme Court of the District of Columbia, and in the Court of Appeals of said District, relating to an interference declared in the Patent Office October 9, 1906, between an application filed June 23, 1898, by one Field, and an application filed May 18, 1906, by the plaintiff Colman. According to the recital, the Examiner of Interferences held Colman entitled to priority June 4, 1910; an appeal to the Examiners in Chief resulted in Colman's favor December 27, 1911; an appeal to the Commissioner of Patents also resulted in Colman's favor June 12, 1912; an appeal to the Court of Appeals for the District of Columbia again resulted in Colman's favor June 3, 1913; a writ of certiorari to review the latter judgment was denied by the Supreme Court of the United States October 29, 1913; Field was then notified by the Commissioner that his claims involved in the interference were finally rejected February 24, 1914; and on October 27, 1914, the patent in suit was issued to Colman and the other plaintiffs in this case.

The defendant also recites, as part of its so-called counterclaim, that Field assigned his application to one Clark, trustee, on June 15, 1898; that Clark assigned it to the defendant October 27, 1906; that the right to issuance of patent on said application has been thus vested in the defendant; and that it--

'has no remedy for the further prosecution of said Field's claim for patent except by remedy in equity * * * under the provisions of Rev. St. Sec. 4915.'

The defendant goes on to allege that the Patent Office proceeding, affirmed as above by the Court of Appeals for the District of Columbia, 'has arbitrarily and without warrant of law deprived the defendant and said Field' of certain rights alleged in substance to be the presumptive right to patent arising from Field's prior application, the right to prove Field to have anticipated Colman, the right to compel Colman to prove that he anticipated Field by evidence other than that accepted as sufficient by the various tribunals above mentioned.

What then follows in the answer as filed is under the head 'III. Prayer.' It asks the court to adjudge and decree as specified in 8 numbered paragraphs following. Those numbered 5-8 are the only ones asking relief relating to the bill and answer proper, viz.: Paragraph 5 asks that the patent in suit be held void as to all its claims involved in the Field interference, or based on the invention described in Field's application; paragraph 6, that 7 of its claims (80-84, 86, 87) be held invalid, because not based on any disclosure in it; paragraph 7, that it be held invalid as to all the 19 claims in suit, because anticipated; paragraph 8, that, in any event, the 7 claims mentioned in paragraph 6 and also 7 others (2, 74, 88-91) be held invalid, because covering no invention patentable over the prior art. But of the above specified claims 5 only are among the 19 now sued on-- Nos. 2, 74, 87, 90, and 91.

The remaining paragraphs under this last head, numbered 1-4, inclusive, relate only to the matters alleged under the so-called counterclaim. Paragraph 4 is the only one asking relief according to Rev. St. Sec. 4915 (Comp. St. 1913, Sec. 9460). The court is therein asked to adjudge and decree that the defendant is entitled, according to law, to receive a patent for Field's inventions as specified in his claims involved in the above interference. Paragraphs 1-3, inclusive, only ask the court to make certain rulings or findings tending (as the defendant contends) to support that conclusion.

What appears as above in the answer under the heading 'II. Counterclaim, ' and in paragraphs 1-4 under the heading 'III. Prayer,' might be the subject of an independent suit in equity against the plaintiffs, because of the express provision in Rev. St. Sec. 4915, that the applicant to whom a patent has been refused, either by the Commissioner of Patents or by the court to which an appeal is taken from his decision, 'may have remedy by bill in equity'; that such remedy is to be administered by 'the court having cognizance thereof, on notice to adverse parties'; and that the remedy is to consist, so far as the court is concerned, in a judgment that such applicant is entitled to the patent.

But, unless it is clear that such an independent suit could properly be called a cross-suit by the present defendant against the present plaintiffs, and brought upon a 'claim' against them such as can be rightly described as a 'counterclaim' within the meaning of rule 30, the court cannot properly pronounce a final judgment in this case both upon the original claim and the so-called 'cross-claim,' and the plaintiffs' motion to strike out should be granted.

As has appeared, it is Field's claim for patent, further prosecution whereof the defendant seeks to accomplish by the portion of its answer here in question. The complaint therein made is that Field, as well as itself, has been deprived of the right to obtain a patent on Field's application. It also alleges that it has already brought, jointly with Field, a suit under section 4915 for the same purpose, and making the same complaints, in an Illinois District Court. To this suit further reference is made below.

'The applicant' in the interference proceedings is the only party to whom section 4915 expressly gives the remedy by bill in equity, and on the defendant's allegations Field was the only applicant in the interference proceedings here involved. Field is nowhere made a party to the present suit. Under the Patent Acts of 1836, 1837, and 1839, the assignee to whom an applicant had transferred his rights after final refusal of a patent was held entitled to the statutory remedy by bill in equity in his own name. It was said that he was 'at least within the spirit,' if not within the letter, of the statutory provisions. Gay v. Cornell, 1 Blatch. 506, Fed. Cas. No. 5,280 (1849). But even if this defendant, under the somewhat different provisions of the act of 1870, now Rev. St. Sec. 4915, might be regarded as 'the applicant,' and entitled to the statutory remedy in its own name independently of Field, it can hardly claim this position in view of its own allegations above referred to. Field, it would seem, might in any case bring the statutory bill in his own name as applicant, and maintain it in the absence of intervention by the defendant. Wende v. Horine (C.C.) 191 F. 620. Under equity rule 37 (198 F. xxviii, 115 C.C.A. xxviii), it would also seem, Field could bring the bill in his own name without joining the defendant, even if it be true that the defendant is the real party in interest, because, as 'the applicant' he is the party expressly authorized by statute. It would be difficult, in view of all the above, to call the independent suit in equity under section 4915 a cross-suit between the parties to the infringement suit, with which Field has no connection.

The difficulty of doing so is increased by the difference in scope and character of the relief sought in the two proceedings. The relief obtainable in this suit, if any, is an injunction forbidding the defendant to infringe further the patent issued to the plaintiffs and ordering that it account to them for profits and damages; a decree which this court would have the power to carry into effect. The relief obtainable, if any, by the defendant and Field, under section 4915, is a decree that Field, instead of the plaintiffs, is entitled to receive a patent for his invention as specified in his rejected application. Such a decree, when filed in the Patent Office, is to 'authorize' the issue of such a patent, but with its entry the power of this court in the proceedings is exhausted. Such a patent would not necessarily be issued to the defendant. Though it might be so issued, under Rev. St. 4895 (Comp. St. 1913, Sec. 9439), whether it should be issued to the defendant or to Field would be within the commissioner's discretion. See Elliott-Fisher Co. v. Underwood Co. (C.C.) 176 F. 372; Thoma v. Perri (D.C.) 205 F. 632.

It can hardly be said, therefore, that in adjudging, under section 4915, that Field is entitled, as between himself and Colman his opponent in the interference, to a patent for the inventions involved in that controversy, the court would be 'pronouncing a final judgment' upon a 'cross-claim' by the present defendant against the present plaintiffs, in the ordinary...