Dickerson v. Tinling
| Decision Date | 13 December 1897 |
| Docket Number | 935. |
| Citation | 84 F. 192 |
| Parties | DICKERSON V. TINLING. |
| Court | U.S. Court of Appeals — Eighth Circuit |
Edward N. Dickerson (Anthony Gref and James H. Brown, on the brief) in pro. per.
Sam B Berry, for appellee.
Before SANBORN and THAYER, Circuit Judges, and RINER, District Judge.
This is an appeal from an order denying a motion for a preliminary injunction to restrain the defendant from infringing letters patent No. 400,086, issued March 26, 1889, to the Farbenfabriken, vormals Friedr. Bayer & Co., a corporation of Germany, hereinafter called Bayer & Co., as assignee of Oskar Hinsberg. The letters patent secure to Bayer & Co. the monopoly of the manufacture and sale of phenacetine or paracet-phenetidine in the United States. The appellant Edward N. Dickerson, alleged in his bill that these letters patent had been issued and assigned to him, and that the appellee was infringing upon his rights by vending in the United States the improvement described in the patent. The appellee answered that Bayer & Co. was the sole owner and manufacturer of phenacetine, which he averred was the same substance which was manufactured by others in Germany and elsewhere as paracet-phenetidine; that Bayer & Co. was the real owner of the patent in suit, and the appellant was its agent, and held the assignment of all rights under the patent for its benefit; that the appellee had been informed and believed that about March 26, 1889, Bayer & Co., or Hinsberg for them, 'obtained a patent on, or registered, in the Germany empire, this same 'phenacetine," and that the German patent or registration had expired, or been rendered void by the authorities of the German empire, and 'that he, in common with many citizens of the United States has bought small quantities of said 'phenacetine' from persons outside of the United States, who had perfect and legal right to deal in the same being the legal purchasers and sellers thereof, and that he has brought the same into the United States, and that he has resold a small quantity thereof in the United States for a legitimate profit. ' The answer contains some other allegations but none that are material to the issue, and it contains no other denial of infringement. To this answer the appellant filed the usual replication, and upon these pleadings and certain affidavits, from which it appears that no patent had ever been issued in Germany, as alleged in the answer, and that every package of phenacetine that had ever been sold by Bayer & Co. in a foreign country had a prohibition against its importation into and sale within the United States printed upon it, and was sold subject to that prohibition, the motion for the temporary injunction was heard and denied.
If it were conceded that Bayer & Co. is the real owner of the letters patent in suit, as alleged in the answer, it would be difficult, upon the facts disclosed by this record, to justify a sale of phenacetine in the United States by this appellee. Section 4884 of the Revised Statutes provides that 'every patent shall contain * * * a grant to the patentee, his heirs or assigns, for the term of seventeen years, of the exclusive right to make, use and vend the invention or discovery throughout the United States, and the territories thereof. ' The answer avers that the appellee bought the phenacetine he is selling in a foreign country, either from Bayer & Co., or from others who had a legal right to sell it in that country. He must have bought it, therefore, of Bayer & Co., or their vendees, or of others. If he bought it of others than Bayer & Co. or their vendees, he bought with it no right to sell it in the United States, because no one but Bayer & Co. and their vendees had that right in this country. The right to sell the patented article in the United States is not governed by the laws of Germany or of England, but by the laws of...
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...hold that patentees may use express restrictions to reserve their patent rights in connection with foreign sales. See Dickerson v. Tinling, 84 F. 192, 194–195 (C.A.8 1897) ; Dickerson v. Matheson, 57 F. 524, 527 (C.A.2 1893). But no "coalesc[ing]" ever took place: Over the following hundred......
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