Pacific Contracting Co. v. Union Paving & Contracting Co.

• Decision Date: 17 May 1897
• Citation: 80 F. 737
• Court: U.S. District Court — Northern District of California
• Parties: PACIFIC CONTRACTING CO. v. UNION PAVING & CONTRACTING CO. et al.

80 F. 737

PACIFIC CONTRACTING CO. v. UNION PAVING & CONTRACTING CO. et al.

United States Circuit Court, N.D. California.

May 17, 1897

Wheaton Kalloch & Kierce, for complainant.

D. H Whittemore, for defendants.

MORROW District Judge.

The bill in this case is in the usual form, for an infringement of letters patent No. 319,125, granted to Judson Rice, Andrew Steiger, and Isaac L. Thurber, and which were assigned and are now held by the present complainant. The validity of the invention covered by the letters patent has been adjudged heretofore. Pacific Contracting Co. v. Southern California Bituminous Pav. Co., 48 F. 300; Contracting Co. v. Bingham, 62 F. 281. The invention is described in the letters patent as a 'process of working and using asphaltum,' and consists, generally speaking, in reducing asphaltum to a plastic condition by the application thereto of hot water or steam, without mixing it with coal tar or any other deleterious substance, and then pressing it under heated rollers or other heated irons. An order to show cause why a preliminary injunction should not be granted was issued on June 6, 1896, and meanwhile a restraining order was granted. The defendants have filed their several answers, to which the complainant has filed its replications, and the case now comes up on the order to show cause. The complainant and the defendants are all citizens of the state of California. The Southern California Bituminous Paving Company by its answer and affidavits, pleads the right, by a license from the complainant, to use the invention involved in this case; the Union Paving &amp Contracting Company denies that the process described in the bill is the process covered by the patent; and the three other defendants, officer of the two defendant corporations deny that they infringed.

It is objected, on the order to show cause, that the court has no jurisdiction of the case, in view of the fact that the rights of the Southern California Bituminous Paving Company to use the invention under its alleged license are involved. This is substantially the only question involved in this proceeding. The general rule is that, where there appears to be a subsisting license between the complainant, and the defendant, the jurisdiction of the court, under the patent law, will not be extended to cover a suit to enforce the terms of the license, or to forfeit the license, on the ground that the terms thereof have been violated. Hartell v. Tilghman, 99 U.S. 547; Albright v. Teas, 106 U.S. 613, 1 Sup.Ct. 550; Manufacturing Co. v. Hyatt, 125 U.S. 46, 8 Sup.Ct. 756; Marsh v. Nichols, Shepard & Co., 140 U.S. 344, 11 Sup.Ct. 798; Wade v. Lawder, 165 U.S. 624, 17 Sup.Ct. 425. But, on the other hand, it is also well settled that where a suit is brought for infringement, and the existence of a license is alleged by the respondent and denied by the complainant, it is competent for the court to determine whether, at the time of the filing of the bill, there was a subsisting license, between the parties. The determination of this fact is, obviously, necessary in order to ascertain whether or not the court has jurisdiction of the suit for an infringement. ...