Dynatech Corp. v. Frigitronics, Inc.

• Decision Date: 06 July 1970
• Docket Number: No. 13771.,13771.
• Citation: 318 F. Supp. 851
• Court: U.S. District Court — District of Connecticut
• Parties: DYNATECH CORP., Plaintiff, v. FRIGITRONICS, INC., Defendant.

318 F. Supp. 851

DYNATECH CORP., Plaintiff, v. FRIGITRONICS, INC., Defendant.

No. 13771.

United States District Court, D. Connecticut.

July 6, 1970.

Robert A. Cesari, Cesari & McKenna, Boston, Mass., for plaintiff.

Garold E. Bramblett, Jr., Buckles & Bramblett, Stamford, Conn., for defendant.

RULING ON DEFENDANT'S MOTION TO DISMISS

CLARIE, District Judge.

The defendant, Frigitronics, Inc., has moved the Court to dismiss this action pursuant to Rule 12(b) (1) and (7), Fed. R.Civ.P., for lack of jurisdiction over the subject matter and for failure to join an indispensable party under Rule 19, Fed. R.Civ.P. Counsel for both parties rely upon the exhibits, affidavits, pleadings and all other papers on file in support of their respective positions. The defendant claims that the plaintiff has failed to join certain indispensable parties who own a proprietary interest in said patent, namely, the patentee, Selig Percy Amoils (Amoils) of the Republic of South Africa and the plaintiff's licensor, Spembly Technical Products, Limited, a limited corporation, organized in England (Spembly). The Court finds that Spembly is an indispensable party and orders the action dismissed sixty (60) days after the date hereof, unless an amendment joining said corporation as a party plaintiff is filed in this Court.

The plaintiff claims to be the owner of the right, title, and interest of U.S. Patent No. 3,502,081, by virtue of an exclusive license effective November 1, 1966, from Spembly. The first inventor, Amoils, contracted with Spambly on January 30, 1966 to grant it the sole and exclusive license to manufacture, license the manufacture and sell a certain low-temperature surgical instrument known as "Amoils Cryo-Surgical Unit" for which patent application No. 540,274 had been filed. Subsequently, after the patent had been issued, the patentee executed a licensing agreement supplemented by a deed, thereby granting to Spembly "the sole and exclusive license to manufacture, use and sell and to license others to manufacture, use and sell" the patented item during the subsistence of the letters patent and any renewal thereof. At that time, Spembly represented itself to be the owner of the entire right, title and interest in the pending Amoils' application, and agreed to grant the plaintiff licensee an exclusive, non-transferable indivisible right and license to manufacture, use and sell the Cryo-surgical instrument throughout the territory of North and South America. The plaintiff is now claiming that the defendant is infringing said letters patent and plaintiff's rights thereunder and it seeks both an injunction and an accounting of damages.

The present motion to dismiss represents that the original patentee, Amoils, and the plaintiff's licensor, Spembly, are both indispensable parties to this action. Their allegations rest on 35 U.S.C. § 281, which prescribes that "(a) patentee shall have remedy by civil action for infringement of his patent;" and 35 U.S.C. § 100, which states, "(t)he word `patentee' includes not only the patentee to whom the patent was issued but also the successors in title to the patentee." The question to be resolved is whether or not the rights retained by the original patentee or its licensee, Spembly, so limited the proprietary rights of the plaintiff, that the latter acquired less than ownership.

Since a river cannot rise higher than its source, neither can a licensor transfer to a licensee more than that which it owned. An early Supreme Court decision still defines the classic test.

"In equity, as at law, when the transfer amounts to a license only, the title remains in the owner of the patent; and suit must be brought in his name, and never in the name of the licensee alone, unless that is necessary to prevent an absolute failure of justice, as where the patentee is the infringer, and cannot sue himself. Any rights of the licensee must be enforced through or in the name of the owner of the patent, and perhaps, if necessary to protect the rights of all parties, joining the licensee with him as a plaintiff." * * *

"Whether a transfer of a particular right or interest under a patent is an assignment or a license does not depend upon the name by which it calls itself, but upon the legal effect of its provisions. * * * (T)he grant of an exclusive right under the patent within a certain district, which does not include the right to make, and the right to use, and the right to sell, is not a grant of a title in the whole patent-right within the district, and is therefore only a license." Waterman v. MacKenzie, 138 U.S. 252, 255-256, 11 S.Ct. 334, 335, 34 L.Ed. 923 (1891).

After examining the licensing contract from Amoils to Spembly, the Court is satisfied that Spembly acquired by license all of the essential elements which constitute the proprietary assignable interest in the patentee's right, title and interest to the...