Perkins v. United States Electric Light Co.

• Decision Date: 01 January 1881
• Parties: PERKINS v. UNITED STATES ELECTRIC LIGHT CO.
• Court: U.S. Court of Appeals — Second Circuit

16 F. 513

PERKINS v. UNITED STATES ELECTRIC LIGHT CO.

United States Circuit Court, S.D. New York.

January 1, 1881

H. A Banning, for plaintiff.

Butler Stillman & Hubbard, for defendant.

WALLACE J.

The complainant moves for a preliminary injunction upon a bill filed to restrain the defendant from granting licenses or otherwise using the rights secured by several letters patent for inventions issued to the defendant.

The complainant engaged in the service of the defendant for a term of years at a salary under a written agreement, which among other things, provided that the defendant should have the option of purchasing such inventions as complainant might make while in defendant's employ, pertaining to the art of lighting by electricity, at such price as might be agreed upon, or, in case the parties should be unable to agree upon the price, then at such price as should be fixed by three arbitrators; one to be selected by each party, and the two thus selected to choose the third. The agreement further provided that the defendant should pay all expenses of procuring letters patent, and should hold all the letters patent and inventions, except such as it should elect to purchase, in trust for the complainant, and to assign them back to him upon being reimbursed the expenses. The defendant elected to purchase the several patents which are the subject of this suit; but the parties were unable to agree upon the price to be paid therefor. Thereafter the defendant asked for an arbitration, selected an arbitrator and notified the complainant. The complainant refused to accede to an arbitration, and now insists upon his right to revoke, and to compel an assignment of the letters patent.

The patents having been issued directly to the defendant, it acquired the legal title. It not only acquired the statutory title to the inventions, but this inured to it with the consent of the complainant and rightfully, under the terms of the agreement between the parties. The complainant has no paramount equity which can prevail against the title of the defendant. There is no equitable principle upon which complainant can found his right to relief. He is entitled to a transfer of such patents only as the defendant has not elected to purchase. If it should be assumed that he is entitled to be paid for his patents what they are fairly worth, and that the defendant and the complainant's remedy is by an action to recover the consideration. Equity will enforce a lien for purchase money, but it does not vacate a transfer because the purchase money has not been paid. The action to enforce the lien is in affirmance of the transfer, and the decree in such an action orders the property to be sold, or so much of it as may be necessary to discharge the lien. Mullikin v. Mullikin, 1 Bland, 538, 541; Wade's Heirs v. Greenwood, 2 Rob. (Va.) 475; Outton v. Mitchell, 4 Bibb, 239. But the defendant has always...