Victor Talking Mach. Co. v. Hawthorne & Sheble Mfg. Co.

• Decision Date: 02 November 1909
• Docket Number: 175.
• Citation: 173 F. 617
• Parties: VICTOR TALKING MACH. CO. v. HAWTHORNE & SHEBLE MFG. CO.
• Court: U.S. District Court — Eastern District of Pennsylvania

173 F. 617

VICTOR TALKING MACH. CO. v. HAWTHORNE & SHEBLE MFG. CO.

No. 175.

United States Circuit Court, E.D. Pennsylvania.

November 2, 1909

Horace Pettit, for the motion.

R Stuart Smith, opposed.

See also, 168 F. 554.

J. B McPHERSON, District Judge.

This is a suit to redress the infringement of a patent.The bill prays for an account of profits, the delivery of the infringing apparatus for the purpose of destruction, and the usual injunction.The defendant appeared and answered, and took part in the examination of the witnesses that were called to make out the complainant's prima facie case.Shortly after the prima facie case was closed, the defendant was adjudged a bankrupt upon adverse proceedings, and a trustee was duly elected.The complainant now asks leave to file a supplemental bill to make the trusteea party to the suit, and the application is resisted on the ground that the suit for infringement seeks redress for a tort, with which the bankrupt's estate has no concern, since a claim for damages founded upon a tort, unconnected with a contractual liability, cannot be proved against the assets and is not affected by the discharge.Re Boston, etc., Iron Works (C.C.)23 F. 880;Re United Button Co. (D.C.)140 F. 495.It is therefore contended that the trustee should not be compelled to appear in such a suit and spend the money of the estate in litigation, which may be prolonged and expensive, and can in no way benefit the creditors.It will be observed, however, that the present motion does not attempt to compel the trustee to make an active defense.It merely asks permission to make him a party, leaving him free to take such action thereafter as he may be advised, or as the bankruptcy court may direct.Certainly he is not bound to defend the suit, if the interest of the estate will not be affected by the litigation; but I can see no good reason for declining to make him a party of record, in order that he may be bound by the decree, so far as that result may properly follow.For example, part of the relief prayed for-- the delivery of infringing apparatus to be destroyed-- may apply to some of the bankrupt's property that has come into his hands; and in other respects, also, it is impossible to decide upon this motion whether or not the bill may injuriously affect the estate in his charge.In a given case it is readily conceivable that a decree for the complainant might seriously injure a valuable patent belonging to the bankrupt but not directly involved in the suit, and it might therefore be desirable to defend that action.This and like matters are for the trustee's consideration in the first instance, and he may then take whatever steps may seem most advantageous.The order that is now to be entered will only permit the complainant to make him a party.What else, if anything, he should be compelled or permitted to do, is a matter for future consideration by the proper court.

There is nothing novel about the pending motion.In Story's Equity Jurisprudence(10th Ed.) Sec. 342, the author says:

'So, if the interest of a defendant is not determined, and only becomes vested in another by an event subsequent to the institution of the suit, as in the case of alienation by deed or devise, or by bankruptcy or insolvency, the defect in the suit may be supplied by supplemental bill, or a bill in the nature of a supplemental bill, whether the suit is become defective merely, or it is abated, as well as become defective.For in these cases the new party comes before the court in exactly the same plight and condition as the former party, is bound by his acts, and may be subject to all the costs of the proceedings from

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