Palmer Pneumatic Tire Co. v. Lozier

• Decision Date: 23 July 1895
• Docket Number: 5,404.
• Citation: 69 F. 346
• Parties: PALMER PNEUMATIC TIRE CO. v. LOZIER.
• Court: U.S. District Court — Northern District of Ohio

69 F. 346

PALMER PNEUMATIC TIRE CO. v. LOZIER.

No. 5,404.

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

July 23, 1895

E. S Thurston, Dyrenforth & Dyrenforth, and L. L. Bond, for complainant.

Wm. A Redding, John R. Bennett, and Gilbert & Hills, for defendant.

RICKS District Judge.

This is a proceeding instituted by the Palmer Pneumatic Tire Company authorized by section 4918 of the Revised Statutes of the United States, which reads as follows:

'Sec. 4918. Whenever there are interfering patents, any person interested in any one of them, or in the working of the invention claimed under either of them, may have relief against the interfering patentee, and all parties interested under him, by suit in equity against the owners of the interfering patent; and the court, on notice to adverse parties, and other due proceedings had according to the course of equity, may adjudge and declare either of the patents void in whole or in part, or inoperative, or invalid in any particular part of the United States, according to the interest of the parties in the patent or the invention patented. But no such judgment or adjudication shall affect the right of any person except the parties to the suit and those deriving title under them subsequent to the rendition of such judgment.'

The complainant avers that, by assignment of John Fullerton Palmer, it is the owner of letters patent No. 489,714, dated January 10, 1893, and letters patent No. 493,220, dated March 7, 1893. These patents cover 'a new and useful improvement in fabric suited to the manufacture of pneumatic tires, and in such pneumatic tires, and the method and apparatus for producing the same, fully described in the letters patent mentioned. ' The bill further avers that on the 9th of October, 1893, Rudolph Huss applied for letters patent as an inventor of the fabric described in patent No. 493,220, above referred to. Letters patent were refused him by the patent office, because of the prior patent allowed to Palmer. An interference was declared by the patent office, on the application of Huss, between his patent and No. 493,220. Testimony was taken, so that on December 3, 1894, a hearing was had, and on March 4, 1895, the examiner of interferences decided that Huss was the original inventor of said fabric. The bill alleges that this decision of the examiner was erroneous, contrary to the evidence, and should not have been made. An appeal was allowed from said decision, but by an oversight of the solicitors for Palmer the appeal was not perfected in time, although afterwards allowed and perfected by leave of the patent office. But pending this action on the part of the patent office, by an error of the primary examiner, letters patent No. 539,224, were granted to Henry A. Lozier, as assignee of Rudolph Huss, on May 14, 1895. The bill alleges that this patent was accepted by the defendant, although his solicitors well knew that an appeal was being perfected by complainant, and that the issuance of this patent to Lozier was an oversight and an error. Thereupon the complainant filed this bill, and now prays, after setting forth the above facts:

'That the said Henry A. Lozier may, if he can, show why your orator should not have the relief herein prayed; that he may, but not upon oath (answer on oath being expressly waived), and according to his knowledge and belief, full, true, and perfect answer make to all and singular the premises; and that the said letters patent No. 439,224, granted to the defendant, May 14, 1895, as the assignee of said Rudolph W. Huss, may, by the decree of this court, be adjudged and declared to be null and void and of no effect whatsoever; and that the defendant may be decreed to pay the damages sustained by your orator by reason of his said fraudulent and unlawful acts, and the costs of this suit; and that the said Henry A. Lozier, his employes and workmen, and all others claiming under, by, and through him, or operating under and by his direction, or with and by his consent, may, during the pendency of this suit, be enjoined, by the order of this court, from directly or indirectly exercising any rights or privileges under and by virtue of said fraudulent letters patent No. 539,224, or threatening or instituting suits for alleged infringement thereof against the licensees or customers of your orator, or any other person or persons whatsoever, or advertising, or pretending in any overt manner whatsoever, that he, the said defendant, is justly entitled to the exclusive rights which by said fraudulent letters patent appear to be conferred, and from directly or indirectly disposing of any right, title, or interest therein; and that your orator may have such other and further relief as to this court may seem meet, and as may be agreeable to equity.'

The first contention urged by the defendant is that the complainant, having surrendered his patent, under section 4918, for the purpose of obtaining a reissue, cannot maintain this action upon it while it is in the hands of the commissioner of patents, awaiting his decision. The complainant admits that the letters patent sued upon have been surrendered...