Radio Corporation of America v. Independent Wireless Tel Co.
| Decision Date | 13 October 1923 |
| Parties | RADIO CORPORATION OF AMERICA et al. v. INDEPENDENT WIRELESS TELEGRAPH CO. et al. |
| Court | U.S. District Court — Southern District of New York |
W. H Taylor, Jr., of New York City, for the motion.
L. F H. Betts, of New York City, opposed.
The bill alleges that the inventions in suit were made by De Forest and assigned by him to the plaintiff the De Forest Company. On March 16, 1917, the De Forest Company granted an exclusive license to the Western Electric Company, which granted the right 'to make, use, * * * and to sell' the inventions in suit for the term of their existence subject to a license theretofore given to the defendant American Telephone & Telegraph Company. This contract reserved, however, to the De Forest Company, certain nonexclusive, nontransferable, and personal licenses, to make and sell the patented apparatus for specified purposes not necessary to enumerate. The Western Electric Company later assigned all its rights in the contract to the defendant American Telephone & Telegraph Company, in whom thereupon there vested all the interest in the patents in suit, except those reserved to the De Forest Company as above stated.
On November 20, 1919, the General Electric Company made a contract with the plaintiff Radio Corporation, by which it granted to it an exclusive license to use and sell for 'radio purposes' all inventions then owned by it or thereafter acquired. 'Radio purposes' was defined 'as the transmission or reception of communications * * * by what are known as electro magnetic waves, but not by wire ' At this time the General Electric Company did not have any interest in the patents in suit, but on July 1, 1920, the defendant American Telephone & Telegraph Company and the General Electric Company entered into a contract by which they exchanged rights in various patents or applications owned or controlled by each. This contract is very long and complicated. Among the rights conferred upon the General Electric Company were (1) a nonexclusive license to make wireless apparatus for the United States; (2) an exclusive license 'in the filed of wireless telegraphy'; (3) an exclusive license to make, use, and sell wireless telephone apparatus for communication between automotive vehicles, except railways; (4) an exclusive license to make, use, and sell such apparatus for amateur purposes, or where 'the business use is incidental,' or where one of the stations is portable; (5) an exclusive license to make, sell, and use wireless telephone apparatus for electric light power and traction companies; (6) an exclusive license to make, use, and sell wireless telephone apparatus as part of a public service telephone system and for all commercial uses.
Contemporaneously with this contract the defendant American Telephone & Telegraph Company consented, as was required in the contract, to the extension by the General Electric Company of its acquired rights to the Radio Company. From these documents it follows that the defendant American Telephone & Telegraph Company, having full rights in the patents in suit, subject to the reserved licenses of the De Forest Company, granted exclusive licenses to the General Electric Company for certain uses of those patents, and that the Radio Company has licenses from the General Electric Company to use and sell the patented apparatus for 'radio purposes,' and, if the General Electric Company will not provide it with apparatus, to make the same.
The motion does not challenge the bill as defective because of the absence of the General Electric Company, and I shall therefore assume, without passing on that question, that the agreement of November 20, 1919, operated to pass all rights of the General Electric Company, acquired under the contract of July 1, 1920, to the Radio Corporation. So viewed, all parties are before the court who have any interest in the patents in suit, except the De Forest Company, and the interests of that company are merely a nonexclusive and personal right to make, sell, and use the inventions for its own profit.
Thus stated the case seems to me to fall squarely within Gayler v. Wilder, 10 How. 477, 13 L.Ed. 504. In that case, which was an action at law, Wilder, the assignee of a patent for safes, sued in his own name. It was proved that Wilder had given Herring an exclusive right to make and sell the safe in the state of New York, where the infringement occurred. Wilder, however, reserved to himself the right to make safes in New York, and to sell them therein on payment of the same royalty that Herring was to pay him. The Supreme Court held that, in order to be an assignment authorizing the licensee to sue in his own name, the license must exclude the licensor, and that, as Wilder had reserved the right to make and sell safes within New York, he remained the owner, and he alone could sue. The authority of that case has...
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Independent Wireless Telegraph Co v. Radio Corporation of America, 87
...party, and, being out of the jurisdiction, could not be made a party defendant by service or joined as a party plaintiff against its will. 297 F. 518. The Circuit Court of Appeals, on appeal, reversed the District Court, held that the De Forest Company was properly made coplaintiff by the R......
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Ussesa Sales Co. v. Josam Mfg. Co.
...affirmed a decision of the Circuit Court of Appeals for this circuit, 297 F. 521, which in turn had reversed a decision of this court, 297 F. 518, would prove to be a precedent for my entertaining this motion. But an examination of the printed record of that case in the Supreme Court shows ......