NYE TOOL & MACHINE WORKS v. CROWN DIE & TOOL CO., 276 F. 376

BAKER, Circuit Judge (after stating the facts as above). Nothing of laches, conspiracy, or pendency of a prior suit is stated in the bill. If such matters exist, they must be brought into the record by appel-lee’s answer. In the statement of the case we have synopsized the bill in order to show that a good cause of action in equity is pleaded unless there is a lack in appellant’s right to sue or in the trial court’s equitable jurisdiction. An inventor is not compelled by law to apply for and take out a patent.

If he has produced a new composition of matter of such a nature that the. ingredients and the process are safe from discovery 'by others either by observing his use of his invention or by independent investigation and experiment, he would have a much more enduring monopoly by refusing to make the “full disclosure” that our patent statute invites. Such is his natural or common-law right. It is'only when he fears discovery and resultant injury from the exercise by others of their natural or common-law right to copy his unpatented invention that he seeks the patent solicitor.

So it is clear to a demonstration that the natural or common-law right and the statutory right are separate and independent.. Neither impinges upon the other. Whether an inventor exercises or refuses to exercise his natural or common-law right has nothing 1o do with his assertion of his statutory right, which consists exclusively of his power, through the courts, to restrain others from practicing his invention and to call them to account for having done so in defiance of his monopoly.

This view of our patent system is not a present invention, for long ago it was fully disclosed and distinctly claimed in open letters to the public. Bloomer v. McQuewan, 14 How. 539, 14 L. Ed. 532; Patterson v. Kentucky, 97 U. S. 501, 24 L. Ed. 1115; Fuller v. Berger, 120 Fed. 274, 56 C. C. A. 588, 65 L. R. A. 381; Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U. S. 405, 28 Sup. Ct. 748, 52 L. Ed. 1122. Appellee’s argument that a monopoly of this character is contrary to public policy is somewhat belated in view of the Constitution and acts of Congress.

Congress, having full constitutional power over the subject, could have provided that a patent should b,e nonassignable, or, if assignable, that it should be assigned only as an entirety. But section, 4898, R. S. (Comp. St. § 9444), says that “any patent, or any interest therein, shall be assignable in law by an instrument in writing.” It would be hard to find broader or clearer words than “any interest therein” with which to clothe the owner of a patent with the right to subdivide and deed or lease his property as he pleased.

As “the right to exclude” is the only property involved, and as that property is made divisible and assignable at the will of the owner, and as the owner had duly assigned to appellant the whole of the right to exclude appellee, it is difficult to understand why appellee should feel concerned about appellant’s lack of right to exclude strangers to this suit.

If appellant had the right to exclude all the strangers in the world, appellee might as well contend that appellant, having good and complete title to the patentee’s right to exclude appellee, should not be permitted to enforce the right because appellant was ignoring all other trespassers and was picking out appellee alone. Jurisdiction in equity to enjoin trespasses upon property is unquestionable.

When that equitable jurisdiction is invoked, the chancellor will hear and determine in the same suit the matter of damages that accrued from the trespasses during the, plaintiff’s ownership of the property and within the period of limitations. If such damages alone were sought, the action would be at law; but because such damages grew out of the ownership that is to be vindicated by the injunction, tire demand therefor, although legal in its nature, is treated as a proper appendage of the bill in equity.

Appellant’s bill alleges that it acquired ownership of the right to exclude appellee "prior to the beginning of this suit,” but without stating the date either in the body of the bill or in the exhibit. Appellee’s alleged infringement covered six years prior to the filing of the bill. Some of that period, may antedate. appellant’s ownership. Reed Manufacturing Company included in its assignment of an interest in the patent to appellant an assignment of its claims for damages during its exclusive ownership. Damages that are incidental to appellant’s ownership are properly included in the bill.

But if appellant desires to recover on the assignment of Reed Manufacturing Company’s right of action at law for the damages suffered by "that company, it should proceed at law upon that separate legal cause of action. The decree is reversed for further proceedings in consonance with this opinion.