May v. Logan County

• Decision Date: 22 March 1887
• Citation: 30 F. 250
• Parties: MAY v. BOARD OF COM'RS OF LOGAN CO., OHIO. SAME v. BOARD OF COM'RS OF SENECA CO., OHIO.
• Court: U.S. District Court — Northern District of Ohio

30 F. 250

MAY v. BOARD OF COM'RS OF LOGAN CO., OHIO.

SAME v. BOARD OF COM'RS OF SENECA CO., OHIO.

United States Circuit Court, N.D. Ohio, Western Division.

March 22, 1887

These are actions to recover of the defendants for alleged infringements of a patent, issued October 4, 1859, to Edwin May, for an improvement in the construction of prisons. The original term of the patent was fourteen years, which was subsequently extended for seven years, the extension expiring October 4, 1880. The patentee, a resident of Indianapolis died testate February 27, 1880. Edwin Forrest May, appointed executor of his last will March 6, 1880, resigned June 7 1880, when George F. McGinnis was appointed administrator de bonis non, with the will annexed. December 30, 1880, said administrator reported to the civil circuit court, of Marion county, Indiana, that all the real and personal estate of said decedent which had come to his hands or knowledge had been sold, except the rights of said decedent in certain letters patent; that a favorable opportunity offered for selling such rights; and that he believed it for the best interest of said estate to sell said rights at private sale. The court thereupon authorized and empowered said administrator so to sell said rights. March 7, 1882, said administrator reported that he had sold such rights to Sarah May, and had executed to her a deed of assignment of such rights, which he brought into court for approval, and thereupon the court ratified and confirmed said sale, and upon examination, ratified, confirmed, and approved the assignment thereof. The assignment recited the procuring of the said letters patent, and also five other letters patent of subsequent dates, and the sale of all the right, title interest, claim, and demand of said estate in, to, by, under, and through the same, and purported to 'sell, assign, transfer, and set over unto the said Sarah May all the right, title, interest, claims, and demands whatsoever which the said estate of said Edwin May, deceased, has in, to, by, under, and through the said improvements and the letters patent and extensions thereof therefor aforesaid; the same to be held and enjoyed by the said Sarah May for her own use and behoof, and for the use and behoof of her legal representatives, to the full end of the term for which said letters patent and extensions thereof are or may be granted, as fully and entirely as the same would have been held and enjoyed by said estate had this assignment and sale not been made, and as by and under the order and authority aforesaid I, as such administrator, can or ought to grant, sell, and assign the same.'

John C. Lee, for Logan County.

Perry M. Adams and Almon Hall, for Seneca County.

Brown & Geddes, for plaintiff.

Before JACKSON and WELKER, JJ.

JACKSON J.

The plaintiff makes no claim against the defendant counties for the infringement or use of the patented apparatus previous to the fourth day of October, 1873, the date at which the extended term of the patent commenced. The petition, which in all essential particulars may be treated and regarded as a declaration in an action on the case, avers that the defendant counties, 'on the fourth day of October, 1873, and up to and on the fourth day of October, 1880, and within and during the term of seven years mentioned in the certificate of extension of said letters patent, and after the granting of said letters patent and said extension, and before the bringing of this suit, and within the district and division aforesaid,' did unlawfully, wrongfully, and injuriously, and without license, make, use, and cause to be made and used, the paid patented apparatus, in and about the construction and use and operation of certain jails or prison buildings, known and designated as the county jails of sail counties, in infringement of the exclusive rights secured to Edwin May by the original letters patent, and the extension thereof. The petitioner then claims, as the assignee of the patentee's right and cause of action for said alleged infringement during the extended term of the patent, damages to the extent of $1,500 against each of the defendant counties. The cause of action which the plaintiff, as assignee, is thus seeking to enforce originated on the fourth day of October, 1873. The present suits were commenced on the twenty-fifth day of September, 1886, within the period of six years from the expiration of the extended term of the patent, but more than six years after the right of action accrued.

The defendants demurred to the petition, and for grounds of demurrer assigned the following: First, that the action is barred by the statute of limitations; second, that the boards of county commissioners nor the defendant counties in Ohio are not liable in an action for damages for the infringement of a patent; third, that the alleged cause of action did not survive the death of Edwin May, the patentee; fourth, that such cause of action was not assignable by the administrator of said patentee; fifth, that these actions are not maintainable by the plaintiff in her own name; and sixth, that said cause of action was not assignable under the statutes of the state of Indiana; that the said circuit court of Marion county, Indiana, had no authority either to direct or to ratify and approve the assignment and transfer of said patent-rights and causes of action made by the administrator to the plaintiff; and that the assignment as made by the legal representative of the patentee did not include said alleged cause of action.

The third, fourth, fifth, and sixth grounds of demurrer, relating to plaintiff's title to the claim or cause of action sued on, and her right to maintain these suits in her own name, will be first briefly considered. It is hardly an open question at this day that a patentee's right of action for an infringement of his patent survives to his personal representatives; and it is well settled that his executor or administrator may not only sue on such cause of action, but may assign and transfer the same to another. A patent-right, with all the incidents arising from infringement thereof, is personal property, and goes, upon the death of the patentee, assignee, or grantee, to his executor or administrator. Section 4884, Rev. St., providing for the grant of a patent 'to the patentee, his heirs and assigns,' does not change the law, or prevent the personal representatives from succeeding to all such rights. Shaw Relief Valve Co. v. New Bedford, 19 F. 753; Walk. Pat. Secs. 396, 397, and cases cited in notes. The objection that plaintiff cannot maintain these actions in her own name is not well taken. Under the Ohio Code of Procedure, an assignee of 'a chose in action,' being the real party in interest, may sue in his or her own name without joining the assignor. While the fifth section of the act of June 1, 1872, (Rev. St. Sec. 914,) recognizes as permanent the distinction between the jurisdiction of law and of equity, it adopts or prescribes for the federal courts any state statute which authorizes suits to be brought in the name of the real party in interest. But, aside from this provision of the statute, it was settled by the supreme court as early as 1829, in the case of Harper v. Butler, 2 Pet. 239, that the assignee of 'a chose in action,' assigned by an executor in the state where he had proved the will and taken out letters testamentary, and where the testator lived and died, could maintain an action in another state, without joining the assignor and without a new probate, if the law of that state allowed an assignee of a 'chose in action' to institute a suit thereon in his own name. See, also, Weed S.M. Co. v. Wicks, 3 Dill. 261, holding that an assignee of a 'chose in action' can sue in his own name in the circuit court sitting in the state of Missouri, whose law, like that of Ohio, permitted suit in the name of the real party in interest. This rule is also recognized in Wilkins v. Ellett, 108 U.S. 257, 2 S.Ct. 641.

But it is insisted that, under the statutes of Indiana relating to the administration of decedents' estates, neither the administrator with the will annexed of Edwin May, nor the civil circuit court of Marion county, Indiana, had any authority to sell and transfer to the plaintiff the rights of action which she is seeking to enforce in these suits. Sections 2217, 2260, 2270, 2281, 2289, 2299, 2301, 2308, of the Revised Statutes of Indiana are referred to in support of these propositions. These sections, which it is not deemed necessary to set out in detail, relate to the administration of estates, the duties of the personal representatives, the manner of disposing of the assets, and the jurisdiction of the civil circuit courts, as courts of probate, in making sales of the personal property of the estate and settlements with the executor or administrator. They confer upon said probate court full authority to sell the property of estates, whenever it is deemed for the interest of parties concerned, or necessary to wind up the administration. In the present case, the administrator with the will annexed, George F. McGinnis, reported to said court in December, 1880, that all the real and personal estate of the decedent which had come to his hands or knowledge had been administered, except the rights of said decedent in certain letters patent, etc., and that it was for the best interest of said estate, as he believed, to sell said rights at private sale. It appears from the record of said proceedings, which, by consent of parties, was submitted by defendants in support of this demurrer, that said circuit court of Marion county, Indiana, thereupon authorized and directed said administrator to sell said patent-rights, which he accordingly did to the plaintiff...