Radio Corporation of America v. Independent Wireless Telegraph Co.
| Decision Date | 03 March 1924 |
| Docket Number | 245. |
| Citation | 297 F. 521 |
| Parties | RADIO CORPORATION OF AMERICA v. INDEPENDENT WIRELESS TELEGRAPH CO. |
| Court | U.S. Court of Appeals — Second Circuit |
L.F.H Betts, of New York City, for appellant.
Pennie Davis, Marvin & Edmonds, of New York City (William H. Davis and Willis H. Taylor, Jr., both of New York City, of counsel), for appellee.
Before ROGERS, MANTON, and MAYER, Circuit Judges.
The bill of complaint was dismissed below on a motion made by the appellee, Independent Wireless Telegraph Company. The suit is for infringement by the Independent Wireless Telegraph Company of the De Forest audion, United States patents Nos 841,387 and 879,532. The inventions were assigned by De Forest to the interpleaded plaintiff company, and it granted an exclusive license to the Western Electric Company, which granted the right to make, use, and sell the inventions in suit for the term of their existence, subject to a license theretofore given to the defendant American Telephone & Telegraph Company. The De Forest Company, however, reserved certain nonexclusive, nontransferable, and personal licenses to make and sell the patented apparatus for specific purposes which are immaterial here. The Western Electric Company assigned all its rights in the contract to the American Telephone & Telegraph Company, and therefore all the interest in the patent in suit, except that reserved by the De Forest Company, vested in the American Telephone & Telegraph Company. Later the General Electric Company made a contract with the Radio Corporation of America, 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. The agreement defined radio purposes as a transmission or reception of communications by what are known as electro-magnetic waves, but not wire.
It appears from the bill of complaint that at this time the General Electric Company had no interest in the patents in suit, but on July 1, 1920, after the agreement, the defendant American Telephone & Telegraph Company and the General Electric Company entered into a contract by which they exchanged rights in the various patents or applications owned or controlled by them. By that contract there was conferred upon the General Electric Company (a) a nonexclusive license to make wireless apparatus for the United States; (b) an exclusive license in the field of wireless telegraphy; (c) an exclusive license to make, use, and sell wireless telephone apparatus for communication between automotive vehicles, except railways; (d) 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; (e) an exclusive license to make, sell, and use wireless telephone apparatus for electric light, power, and traction companies. At the same time the American Telephone & Telegraph Company consented to the extension by the General Electric Company of its rights acquired to the appellant. Thus the 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 these patents, and the appellant 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 reason given for the dismissal was the lack of parties to the bill of complaint. We held in Radio Corporation of America v. Emerson, 296 F. 51 (decided January 7, 1924), that under the agreements found in that record, which are the same as contained in this record, the Radio Corporation is the exclusive licensee of the patents here in suit. The argument there was that it was not the owner of the patents, and, as it was only a nonexclusive licensee, it was not a proper party. There the De Forest Company made claim to the patents and voluntarily asserted that claim as such party. We said that its interest could be determined at final hearing, and that to permit it to remain a party plaintiff was not prejudicial to any of the other complainants. And we said:
'Indeed, it is a protection to the appellants in any possible future claim which the De Forest Company might base on acts of infringement, if it should eventually turn out to have some...
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Independent Wireless Telegraph Co v. Radio Corporation of America, 87
...held that the De Forest Company was properly made coplaintiff by the Radio Corporation, and remanded the case for further proceedings. 297 F. 521. We have brought the case here on certiorari. Section 240, Judicial Code (Comp. St. § The respondent, in its argument to sustain the ruling of th......
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