Fruit-Cleaning Co. v. Fresno Home-Packing Co.

• Decision Date: 22 May 1899
• Docket Number: 12,529.
• Citation: 94 F. 845
• Parties: FRUIT-CLEANING CO. v. FRESNO HOME-PACKING CO. et al.
• Court: U.S. District Court — Northern District of California

94 F. 845

FRUIT-CLEANING CO. v. FRESNO HOME-PACKING CO. et al.

No. 12,529.

United States Circuit Court, N.D. California.

May 22, 1899

John H Miller and Tracy, Boardman & Platt (T. D. Merwin, of counsel), for complainant.

Wheaton & Kalloch and Bigelow & Titus, for defendants.

MORROW Circuit Judge.

This is a suit in equity for infringement of letters patent on mechanism for seeking fruit. The bill of complaint describes the complainant as 'the Fruit-Cleaning Company a co-partnership consisting of Alfred Nicholls, George E Lewis, and Charles F. Allen, doing business at the city of Brooklyn, in the state of New York. ' It is alleged that one George C. La Due, a citizen of the United States, residing at the city of Brooklyn, N.Y., was the inventor of mechanism for seeding fruit, and on the 23d day of May, 1895, applied for letters patent of the United States on the same; that, prior to the issuance of any patent therefor, the said La Due, by an instrument in writing executed as required by law, sold, assigned, and transferred to the Fruit-Cleaning Company all his right, title, and interest in and to the invention; that said assignment was filed in the patent office, and on July 30, 1895, letters patent of the United States No. 543,834 were granted to the Fruit-Cleaning Company for said invention, since which time the said company has been the sole owner and holder thereof, has made large numbers of machines containing the said invention, and upon each one has caused to be marked the word 'Patented,' with date and number of patent. The respondents are alleged to be the Fresno Home-Packing Company (a California corporation), L. I. Gray, Thomas H. Lynch, L. R. Payne, E. J. Gray, and John D. Gray, and to have infringed upon the rights of complainant by the making and using, within the two years last past, in the Southern district of California, machines containing and embracing the invention patented in and by said letters patent No. 543,834. Complainant alleges great and irreparable damage by reason of the infringement, and prays for a writ of injunction restraining respondents from making, using, and selling any machines containing said invention, for an accounting, and for costs of suit. Respondents, in their answer filed February 17, 1898, deny that George C. La Due was the original or first inventor of the said mechanism for seeding fruit, and aver that the alleged invention was described and patented in United States letters patent No. 56,721, granted to J. B. Crosby, of Boston, Mass., on July 31, 1866, for an improved raisin seeder or mechanism for seeding fruit. They admit the filing of an application for patent by said La Due; the assignment by him of his right, title, and interest in the same to the Fruit-Cleaning Company; and the granting of letters patent No. 543,834 to said the Fruit-Cleaning Company; but allege that the patent so granted was and is invalid by reason of the prior invention and patent of said mechanism by said J. B. Crosby, and there is therefore no infringement. A replication was filed to this answer on February 28, 1898, and the parties thereupon proceeded to take testimony. Respondents, on October 13, 1898, asked leave to file an amended answer, setting up as a defense the alleged defect in the character of complainant. The application was denied, and the case was set for argument on final hearing. Thereafter, on October 26, 1898, a motion was made by respondents to dismiss the bill of complaint, upon the grounds that no person, either natural or artificial, having capacity, power, or right to maintain a suit in this court, is named as complainant in said bill, the Fruit-Cleaning Company being neither a corporation nor a natural person, but only the fictitious name of a co-partnership, not a party constituting any actual or legal entity, and therefore incapable in law of being a complainant in this suit; also, that no person or entity, either natural or artificial, is named as complainant over whom this court can exercise any jurisdiction. It is admitted by the respondents that it is too late to raise the objection of a mere defect of parties by demurrer, but it is contended that the motion to dismiss is proper at this time, for the reason that there is an entire absence of a party plaintiff; that, without such a party, the court has no jurisdiction to try any of the issues of fact tendered by the bill of complaint; and that this objection can be raised in any form and at any stage of the proceedings. It is not a question of federal jurisdiction based upon allegations of diverse citizenship of the parties to the action. The federal jurisdiction is invoked in this case on the ground that it is a suit in equity arising under the patent laws of the United States. Nor is it a question of misjoinder or nonjoinder of parties plaintiff, but it is the legal question whether there is an actual party plaintiff in the case. If there is no such party capable of maintaining this action, then the case should be dismissed.

The introductory part of the bill now under consideration is as follows: 'The Fruit-Cleaning Company, a co-partnership consisting of Alfred Nicholls, George E. Lewis, and Charles F. Allen, doing business at the city of Brooklyn, in the state of New York, complainant, brings this its bill of complaint,' etc. This is in form, at least, a substantial compliance with equity rule No. 20, which requires that every bill, in the introductory part thereof, shall contain the names, places of abode, and citizenship of all the parties plaintiff. But it is objected that the Fruit-Cleaning Company, which is here set forth as the plaintiff, is the name of a co-partnership that does not contain the names of the partners, and no federal or state statute authorize an action to be brought by plaintiff in a co-partnership or firm name. The answer to this objection is that, while the co-partnership name does not itself disclose the names of the co-partners, they are given in the title to the bill of complaint, and these names so declared constitute as much a part of the introduction to the bill as the name of the co-partnership. But the bill goes further, and alleges 'that, at all the times hereinafter mentioned, the said Alfred Nicholls, George E. Lewis, and Charles F. Allen were and are co-partners in trade under the firm name and style of the Fruit-Cleaning Company, having its principal place of business at the city of Brooklyn, in the state of New York. ' This specific averment as to the parties composing the firm or partnership named as plaintiff discloses the real parties in interest, and informs the respondents of the names of their adversaries. These are the parties to whom the court will resort, if necessary, to compel obedience of orders, and to enforce the payment of any costs awarded in favor of the respondents. Wise v. Williams, 72 Cal. 544, 14 P. 204; 1 Daniell, Ch.Prac. (6th Am.Ed.) 357. The objection that there is no party plaintiff to the action cannot, therefore, be sustained.

It is next objected that the plaintiff has no title to the invention patented. This objection was not taken in the pleadings, but, on the contrary, respondents in their answer 'admit that on the 23d day of May, 1895, the said George C. La Due filed in the patent office of the United States an application praying for the granting and issuing of letters patent of the United States for the same; that, prior to the granting and issuing of any patent therefor, the said La Due did, by an instrument in writing, under his hand and seal, executed as required by law, assign and transfer to said complainant, the Fruit-Cleaning Company, all his right, title, and interest in and to said invention, and did by said assignment request the commissioner of patents to issue such patents to said complainant, the said Fruit-Cleaning Company, and that said assignment was in writing, and was filed in the patent office of the United States prior to the granting and issuing of any patent for said invention. ' Respondents further admit 'that, after proceedings had and taken in the matter of said application, and no the 30th day of July, 1895, letters patent of the United States thereunder, dated on that day, and numbered 543,834, were granted, issued, and delivered by the government of the United States to said complainant the Fruit-Cleaning Company. ' The respondents further admit 'that said letters patent were issued in due form of law, under the seal of the patent office of the United States, and were signed by the secretary of the interior, and countersigned by the commissioner of patents of the United States, and that prior to the issuance thereof all proceedings were had and taken which were required by law to be had and taken prior to the issuance of letters patent for new and useful inventions. ' These admissions on the part of the respondents constitute all the facts necessary in this case to establish the complainant's title to the patent, and enable it to maintain this action for its infringement.

It is contended, however, that it appears from the complaint that the patent to the invention was issued to a co-partnership that a co-partnership has no legal capacity to take the legal title to a grant; and therefore the patent is void. But a patent right is an incorporeal kind of personal property (Shaw Relief-Valve Co. v. City of New Bedford, 19 F. 753; Bradley v. Dull, Id. 913; Vose v. Singer, 4 Allen, 230; Machine Co. v. Featherstone, 147 U.S. 209, 222, 13 Sup.Ct. 283), and, in a certain sense, analogous to property in a share of stock (Hall, Pat. Est. Sec. 14). The discoverer of a new and useful improvement is vested by law with an inchoate right to its exclusive use, which he may perfect and make absolute by securing a patent from...