Minerals Separation v. Miami Copper Co., 331.

• Decision Date: 15 July 1921
• Docket Number: 331.
• Citation: 275 F. 572
• Parties: MINERALS SEPARATION, Ltd., et al. v. MIAMI COPPER CO.
• Court: U.S. District Court — District of Delaware

275 F. 572

MINERALS SEPARATION, Ltd., et al. v. MIAMI COPPER CO.

No. 331.

United States District Court, D. Delaware.

July 15, 1921

Henry D. Williams, William Houston Kenyon, and Lindley M. Garrison all of New York City, and Thomas F. Bayard, of Wilmington Del., for plaintiffs.

Charles Neave, Maxwell Barus, and John F. Neary, all of New York City, for defendant.

MORRIS District Judge.

The prior history of this cause is recorded in 237 F. 609; 244 F 752, 157 C.C.A. 200; 264 F. 528; 268 F. 862; (C.C.A.) 269 F. 265. The matter now before the court arises upon supplemental bill, answer, and proofs taken thereunder. The supplemental bill was filed against Miami Copper Company, the defendant, by Minerals Separation, Limited, the original plaintiff, hereinafter called the Company, and by Minerals Separation North American Corporation, a Maryland corporation, and alleges that the latter corporation has acquired from the original plaintiff through Minerals Separation American Syndicate (1913), Limited, hereinafter called the Syndicate, the beneficial interest in the patents in suit, and that on March 28, 1917, the Company filed its disclaimer to so much of the thing patented by claims 9, 10, and 11 of letters patent No. 835,120, one of the patents in suit, as it did not choose to hold or claim by virtue of that patent. The special prayer of the supplemental bill is:

'That your orator, Minerals Separation North American Corporation, have leave to join in, and it does hereby join in, all the prayers of the bill of complaint, and that it have the full benefit of all the record and proceedings heretofore had and taken herein and of the interlocutory decree and injunction, and of the accounting proceedings.'

The defendant contends that in July, 1913, the Company parted with and the Syndicate acquired the complete title, both legal and equitable, to the patents in suit and all rights to damages or profits thereunder; that the Maryland corporation, by bill of sale of December 7, 1916, became and now is the sole owner of all the rights so acquired by the Syndicate, and that, consequently, the Company, not having the legal title to the patents, may not further prosecute this suit, either as sole plaintiff or as coplaintiff with the Maryland corporation; that the Maryland corporation must proceed alone in seeking any relief to which it may deem itself entitled; that the disclaimer, having been filed by the Company after it parted with its entire title to the patent, is void; that more than a reasonable time has elapsed since, by reason of the decision in the Hyde Case, 242 U.S. 261, 37 Sup.Ct. 82, 61 L.Ed. 286, it became the duty of the owner of the patent to file a disclaimer; that the Maryland corporation, the sole owner, has filed none, and that, for the foregoing reasons, the supplemental bill should be dismissed. The defendant does not deny, but, on the contrary, asserts, that the beneficial interest in the patents passed from the Company to the Syndicate at the time of the execution of the agreement. It does not deny that a person holding the beneficial interest in a patent may properly be joined as coplaintiff with the holder of the legal title. Nor does it deny that all the rights acquired from the Company by the Syndicate were, in December, 1916, transferred to the Maryland corporation and are now owned by it.

The crucial question now for determination is therefore whether in 1913 the Company parted with and the Syndicate acquired the legal title to the patents in suit. The transaction in question between the Company and the Syndicate is evidenced by a written agreement, dated July 8, 1913, the pertinent portions of which are as follows: '1. The Company shall sell and the Syndicate shall purchase

'First. The letters patent and rights mentioned in the schedule hereto but subject to certain licenses granted by the Company, * * *

'Secondly. The benefit and rights of the Company of and under the said licenses and of any other licenses that may be granted prior to the completion of the purchase, and

'Thirdly. The exclusive right so far as the Company can confer the same to apply for and obtain in the republic of Cuba and the Philippine Islands patents in connection with any of the inventions comprised in the letters patent and applications mentioned in the schedule hereto and generally in connection with processes and apparatus for separating different pulverulent materials by oil selection, gaseous floatation or other surface tension phenomena.

'2. Part of the consideration for the said sale shall be the sum of . . .93,750, which shall be paid and satisfied by the allotment to the Company, or its nominee or nominees of 187,500 fully paid B shares of ten shillings each in the capital of the Syndicate.

'3. As the residue of the consideration for the said sale, the Syndicate shall indemnify the Company against all liability and obligations of the Company under or in respect of any of the licenses granted by them and particulars of which are set out in clause 1 hereof and shall also indemnify the Company against all liability and obligations of the Company under or in respect of all costs and charges already or hereafter to be incurred by the Company in connection with applying for and taking out patents in the said republic of Cuba and the Syndicate shall further indemnify the Company against the liabilities of the Company under a letter dated second day of March one thousand nine hundred and ten from the Company to one James M. Hyde and against all sums which the Company may have been ordered and...