Gibbs v. Emerson Electric Mfg. Co., 263.

• Decision Date: 18 September 1939
• Docket Number: No. 263.,263.
• Citation: 29 F. Supp. 810
• Parties: GIBBS v. EMERSON ELECTRIC MFG. CO. et al.
• Court: U.S. District Court — Western District of Missouri

29 F. Supp. 810

GIBBS v. EMERSON ELECTRIC MFG. CO. et al.

No. 263.

District Court, W. D. Missouri, W. D.

September 18, 1939.

Walter A. Leimer, of Kansas City, Mo., for plaintiff.

Lawrence C. Kingsland, of St. Louis, Mo. (Edmund C. Rogers and Estill E. Ezell, both of St. Louis, Mo., of counsel), for defendant Emerson Electric Mfg. Co.

Alfred R. Fuchs, of Kansas City, Mo., for defendant Missouri Valley Electric Co.

REEVES, District Judge.

The two questions among others arising in this case are, first, on a motion to dismiss, and, second, on a motion to quash service of process as to one of the defendants. These will be considered in their order.

On the motion to dismiss: The suit involves a patent infringement, and the plaintiff avers that one of the defendants owned a part interest in said patent and that the plaintiff and said defendant are co-owners of the fee simple title. These averments are covered by paragraphs 5 and 6 of the complaint, and are as follows:

"5. That said Eugene B. Berkowitz has or claims some interest in the subject matter of this cause of action by virtue of an assignment of a one-half interest in the invention of plaintiff Orma L. Gibbs, prior to the issue of the patent thereon, hereinafter mentioned. That said defendant Eugene B. Berkowitz, has been requested by plaintiff Orma L. Gibbs to become a plaintiff in the within action but has refused to do so and has therefore been made a defendant."

"6. That on September 17, 1934, United States Letters Patent No. 2,032,610, were duly and legally issued to plaintiff for an invention in an electric fan; and since that date plaintiff has been and still is the owner of those letters patent subject to the assignment of a one-half interest to said Eugene B. Berkowitz as previously set forth."

While Rule 19(a), 28 U.S.C.A. following section 723c, allows a plaintiff to make a recalcitrant interested person a party defendant, nevertheless it is contended that this rule does not apply in patent cases due to the peculiar nature of a patent as property.

In 48 C.J. Section 365, p. 238, relating to the subject of rights, powers and liabilities of co-owners of patents, the text is illuminating, and is as follows: "The use of a patent right is different from the use of any other property, and in determining the rights, powers, and liabilities of coowners of patents it is not safe to follow the rules adopted in regard to co-owners of ordinary chattels. The nature of a patent is such that joint owners in it are at the mercy of each other. In the absence of a special agreement, each co-owner may manufacture, use, and sell the patented invention with or without the consent of his coowner, no matter how small his interest may be, without liability to account for his individual use of the invention, and without being liable to account for profits, unless such profits accrue after a joint owner has procured an assignment of his coowner's interest to himself by fraud."

In McDuffee et al. v. Hestonville, M. & F. Pass. Ry. Co., 162 F. 36, loc. cit. 38, 39, the Court of Appeals, Third Circuit, in commenting upon joint ownership of a patent used this language: "Joint owners of a patent are at the mercy of each other. Each of them may use or license others to use the invention without the consent of his fellows and without responsibility to such fellows for the profits arising from such use or license."

Also, in Aspinwall Manufacturing Co. v. Gill et al., 32 F. 697, loc. cit. 702, the Circuit Court of New Jersey, in discussing the question of joint ownership of a patent, said: "The exact mutual rights of part owners of a patent have never yet been authoritatively settled."

The parties who own patents together have been variously defined. 48 C.J. Section 365, p. 237, in discussing the subject of Joint Owners, said in the text: "Where a patent is issued to two or more persons, they become coowners, or owners in common, or cotenants, or tenants in common, of the right and property secured by the patent. The assignment of an undivided interest in a patent right constitutes the assignee a joint owner with the assignor."

From an examination of the authorities it appears that one joint owner or coowner or tenant in common of a patent right cannot compel the other coowner to join in a suit for an infringement, and neither can he make him a party defendant. This being the law, the plaintiff is not entitled to maintain this suit. It has been held that these are...