Hayward v. Andrews
| Citation | 106 U.S. 672,27 L.Ed. 271,1 S.Ct. 544 |
| Parties | HAYWARD v. ANDREWS and others |
| Decision Date | 15 January 1883 |
| Court | United States Supreme Court |
Gilbert M. Spier, Jr., Ephraim Banning, and Thos. A. Banning, for appellant.
E. A. West and L. L. Bond, for appellees.
This appeal brings into review the decree of the circuit court sustaining a general demurrer to the amended bill of the complainant, and dismissing the bill for want of equity. The case made by the amended bill and exhibits is this:
Aaron H. Allen was the owner of reissued patent No. 1,126 granted to him upon the surrender of original patent No. 12,017, dated December 5, 1854, for a new and useful improvement in seats for public buildings, which was extended for seven years from December 5, 1868, and which consequently expired by limitation December 4, 1875. The complainant claimed to be the sole and exclusive owner in equity of all claims for damages arising out of or occasioned by infringements of said reissued letter patents, committed after September 18, 1869, and of all claims for gains and profits, derived by others by reason of such infringements, by virtue of certain written instruments, set out as exhibits to the bill.
The first of these is an instrument dated September 18, 1869, by which Allen grants to J. W. Schermerhorn & Co. 'the sole right and privilege of manufacturing and selling school furniture, made according to' the reissued patent, 'for a tilting seat on the lever principle,' subject to the terms and conditions of an indenture between the parties, which, however, is not set out. On April 22, 1881, John H. Platt, as assignee of James W. Schermerhorn, George M. Kendall, and George Munger, bankrupts, transfers to the complainant all the interest of the bankrupts in the Allen patent, and all causes of action arising to him, as assignee of the bankrupts, by reason of his interest in the said patent, and especially his claim in a certain suit then pending, brought by Allen in the circuit court of the United States for the southern district of New York against the city of New York. The second and only other instrument of title exhibited is an assignment from Allen, the patentee, to the complainant, dated March 8, 1880, whereby Allen transfers to him and to his assigns all his right and interest in the suit, mentioned in the assignment from Platt, agaisnt the city of New York, 'together with all claims for damages arising since the eighteenth day of September, 1869, against any persons, firms, or corporations, by reason of infringements of letters patent of the United States for a tilting seat supported on the lever principle,' being the reissued patent specified in the bill. And the complainant is thereby further constituted the attorney in fact of Allen, irrevocably, in his name to demand and recover all such dam- ages, for his own use, paying all expenses, but accounting for 30 per cent. of all sums recovered to allen, until the latter shall have received $6,600, and no longer.
It is alleged in the amended bill that in the suit against the city of New York a decision was reached sustaining the validity of the patent, but no final decree therein has been entered; and that, owing to the delays incident to that litigation, while waiting for a decision upon the validity of the patent, neither Allen nor complainant have been in a situation to prosecute other infringers or sooner to file this bill. It is also alleged in the amended bill that the defendants have infringed the said letters patent since September 18, 1869, and until the expiration thereof, and in violation thereof 'have manufactured, sold, and used the said invention for improvements in seats for public buildings, patented as aforesaid, whereby great injury resulted to your orator, and great gains and profits accured to the said defendants,' for which, accordingly, an account is prayed, and a decree for the amount thereof and for damages.
The original bill was filed December 1, 1881, Allen being a concomplainant, and the amended bill on May 25, 1882, the original bill having been dismissed as to Allen.
It is manifest that the right claimed by the complainant receives no support from any title derived from Allen through J. W. Schermerhorn & Co., for the right of the latter under the instrument of September 18, 1869, was that of mere licensees. They could maintain no action for damages or profits against infringers, for they had no interest in the patent, nor was there any assignment to them of any right of action accrued or to accrue to Allen. In addition to this, the license itself only extended to the manufacture and sale of school furniture, and there is no allegation in the amended bill that the defendants had infringed the patent in that respect. That branch, therefore, of the complainant's bill is removed from the case, and he is relieved from the embarrassment which, it is alleged in argument, is occasioned by the uncertainty produced by alternative and inconsistent titles, and which is made one of the grounds for claiming the right to resort to equity. The case, then, is left to stand upon the right derived under the contract between Allen and the complainant of March 8, 1880, and the single question remains whether the assignee of a chose in action may proceed by bill in equity to enforce for his own use the legal right of his assignor, merely because he cannot sue at law in his own name.
It is admitted that according to the rule declared and established in Root v. Railroad Co. 105 U. S. 189, the patentee could not, in his own name and right, maintain the present suit, and the original bill, in which he was a co-complainant with the appellant, was accordingly dismissed as to him. To permit the latter to proceed in equity, upon the mere ground of the assignment to him, would be substantially to abrogate that rule. The principle was stated to be that the relief granted to a patentee in equity, by the recovery of profits and damages against an infringer, was 'incidental to some other equity, the right to enforce which secures to the patentee his standing in court;' that 'the most general ground for equitable interposition is to insure to the patentee the enjoyment of his specific right by injunction against a continuance of...
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