Fishel, Nessler Co. v. Fishel & Co.

• Decision Date: 14 April 1913
• Docket Number: 209.
• Citation: 204 F. 790
• Parties: FISHEL NESSLER CO. v. FISHEL & CO. et al.
• Court: U.S. Court of Appeals — Second Circuit

204 F. 790

FISHEL NESSLER CO. v. FISHEL & CO. et al.

No. 209.

United States Court of Appeals, Second Circuit.

April 14, 1913

H. D Williams, of New York City, for appellants.

L. F Dittenhoefer, of New York City, for appellee.

Before LACOMBE, WARD, and NOYES, Circuit Judges.

LACOMBE Circuit Judge.

The firm Fishel, Nessler & Co. was composed of the patentee Henry W. Fishel, and Theodore H. Fishel. This firm and the individual members thereof went into bankruptcy and all their property passed to their trustee. The latter sold these two patents in due course to one Swartz. Subsequently the complainant company (Fishel Nessler Company) was incorporated and Swartz thereupon sold and assigned these patents to it; Theodore H. Fishel is its president and general manager. The defendant Fishel & Co. is a corporation, composed of the wife and a son of Henry W. Fishel and one other person. Henry W. is not a director or stockholder, but is the general office man and apparently is carrying on his former occupation through this corporation. It is conceded that it is practically his concern.

At the trial the court directed that the testimony offered by defendants be limited to the issue of infringement 'upon the ground that the defendants were estopped from denying the validity of the patents. ' The court did not write any opinion and the defendant appellants apparently assume that it held that the estoppel was created by the bankruptcy sale, in favor of Swartz the purchaser and of his subsequent assignees. It is a familiar principle that a patentee who transfers his patent to some one else cannot thereafter, when sued by such transferee for infringement, assert that the patent is invalid, and the main argument in the case is directed to the question whether this principle will apply when the transfer is not a voluntary one; certainly the bankruptcy sale was not the voluntary act of the owner of the patent.

We do not think it necessary to examine this question. The patentee was Henry W. Fishel. Voluntarily and long before bankruptcy he assigned to himself and Theodore H. Fishel. Whatever rights Theodore had would pass to the person to whom he might assign them, and for the mere purpose of transferring those rights such assignment would be effective, whether it was voluntary or involuntary. Theodore's rights in the patents have passed, through the bankruptcy sale to Swartz to complainant, and the original...