FEDERAL REl'ORTll:n,

vol. 63.

fel.'W1t;t1l1ng. Perfection ofWOl-'klnanship, much itmaYi increase or diD;l.inish, the is not patentabl/l. skill,with conveniences adis recognized in all the cases. .. .. .. The comblliatlon, to be patentable, must prOduce It different force or effect, or maulHniithe combIned .forces oi-processes. froIil1 that given by thier separate m'ust be a, n,e,w result produ"c,ed by their union. If not so, It ilfonl:r···$p', elements."

propositions are applicable, to "t4e combination of. the lead'alld india rubber,or other erasing substance, in the holder pencil," are applica:ble to the catch-basin cover and t6.the parts of which it ul?' The faatllre claimed for it in argument was the.obliqv.e bars, and",io0ooer todistinguililh those from the bars in the Synge devicet:designed, for a" strictly anal0S't;niS use, 'the, Sl1ggestionwas thlltjn thai structure the ,1:)0,1'1:1 aI'e hinged at the upper end, and, being unattached at the lower end, are capable of being liftm}.'""0a wkJch was" followed 'bYh in to a from the 'bench, that a respecbilike thafM the Patent would 'tnade,W'nhbars hinged at tht} top andunattac,hed D9t belQ'Y., · Itis, evident onslfch dis· Th:e should, ,' ,

,

. .

v. CiTY'OF'FT.WAYNE. ,

\

(CIrcuit Court Of 1.

Seventh, Circuit. ,October 1, ,1894.) No.

PATENTS FOR INVENTIQ1'!S""!:";{NFRINGlilMENT-EQUlTY, JURHlDIOTION.

Where. a, suit to restl'aJn. the infringenwnt of it patent to recover damagell therefor is begun about two months and a halt l1efore the patent expires, the expiration of the, patent before any prellminary injunction '11BB been applied fot does not deprive the court ofjurlsdiction of the case to award damages. Where the complaiJ:Ian;t In such suit rights under the pat· ent pending suit, but llt1;er expiration. of the pat.ent,his, assignee is entitled to be complainant, tile an original bill In the nature of It supplemental bill. 58 Fed. 404, ,
,

2.

SAME-AsEiIGNMENT AFTIl:;J;t EXPIRATION OF 'l'llE PATENT.

AVpE'al from the Circuit Court of the United States f<or the Dis· :ttlict of Indiana. ' Suit by Isaac C. Walker against the city of Ft Wayne to restrain the alleged infringement of a patent. Nathan O. Ross was substituted al1lplaintiff, and ft1l:td,a supplemental bilt A demurrer there· ,to was sustained (58 Fed. 404), and Ross appeals.
On the 21st of April, 1892, Isaac C. W!ilker brought in the court below ,his bill of complaint against the city of Ft. Wayne, Ind., alleging infringe,ment ,of reissued letters patent No. ,6,831). January 4, 1876, in lieu of original letters No. 165,488, granted July 13, 1875" to Robert Bragg, showing adjudications of ,the validity of the patent, and praying a discovery, injunction, and damages. At the ensuing May term of the court, on May 5, 1892, the defendant tiled a plea, which, besides the special matters al-

ROSS

v.

CITY OF FT.

467

leged, contained the averment, .equlvalent to the general issue, "that said city has never caused to be made, used, or sold, or contemplated the making, use, or sale of any such dE\vlce as set forth in plaintiff's blll, or its plea herein, rior any device similar. to that in plaintiff's bill;" arid for a second plea it was alleged "that at the commencement of this suit the patent in the bill set forth was not owned and held by the complainant alone, but was owned and held jointly by the complainant, the Hon. N.O. Ross, of Logansport, Ind., Edward C. Egan, and Atwater J. Treat of Indianapolis, Ind., and others to defendant unknown, in and of the state of Indiana." No further step was taken until the ensuing term of court, when, on November 4, 1892, the appellant, Nathan O. Ross, moved in writing, sup- . ported by affidavit, "for leave to file herein the bill, in the nature of a supplemental bill, herewith exhibited," and that he be substituted as complainant, with leave to prosecute the cause in his own behalf and in behalf of the equitable interests reelted in the bill, and have the benefit of all proceedings theretofore had in the case. By that affidavit, as well as by the averments of the proffered bill, it appears that, when the suit was commenced,. Walker held the legal title of the letters patent in trust for himself, RoSs, and three others, and that afterwards, September 14, 1892, with the consent of all of the beneficiaries, Walker transferred his entire right, title, and interest in the patent, and in all rights of action for infringement thereof, and in aU rights of. whatsoever kind in respect thereto, held by him, to Ross, who thereby acquired the legal title and all rights of action; taking for himself a five-eighths beneficial interest, and for each of the other beneficiaries (Shirk, Egan, and Treat) a one-eighth interest. Over objection by the. defendant, Ross was substituted for Walker as plaintiff, and leave givell him to file, as it is called in the order, "An Amended and Supplemental Bill," a.nd the bill proposed was then filed. It contains the substance Of an original bill in the nature of a supplemental days later the defendant moved the court to set aside this order, and to strike the bill from the files, and, that motion having been overruled, demurJ:"ed. The court sustained the demurrer on the ground that, the term of the pat· ent having expired, the assignment by Walker to Ross vested the latter only with the right to recover damages for past infringements in a suit at law, and gave him no standing to prosecute the pending suit in equity. Upon this point the opinion of the court, reported in 58 Fed. 404, 407, is as follows: "The important and difficult question is whether the present plaintiff Can maintain his bill on the equity side of the court. It is elementa):"y that a party who ·has a plain, adequate, and complete remedy at law cannot successfully invoke the jurisdiction of a court of equity. The original plaintiff brought suit about two and a half months before the term of his patent expired. He prayed for an· injunction in his bill, but took no steps to procure a temporary restraining order or to bring the sult to a hearing while he remained the party of record. While an application for a tempora):"Y restraining order might have been made before the term of his patent expired, yet, according to the course of procedure of the court, it would have been impracticable to have prosecuted the suit to final hearing and deeree within that time. 'Vhen the patent has expired, and the entire claim of the plaintiff against the defendant rests upon the infringing acts performed during the term, .an action on the case for the recovery of damages generally affords a complete redress, and the only one to which the plaintiff is entitled. Consolidated SafetY-Valve Co. v. Ashton Valve Co., 26 Fed. 319; 3 Rob. Pat. § 1092. An adequate remedy at law exists in favor of the owner of the patent, against the infringer, whenever the sole relief required Is compensation for past injury, provided the remedy can be afforded without equitable aid. When the plaintiff has chosen to seek his recompense for the enjoyment of his invention through an established license fee, and the infringing acts raise an implied acceptance of the offer, the sum which the plaintiff is entitled to reeover is certain and fixed, and the remedy at law is adequate, and a court of equity is without jurisdiction; and, Where the plaintiff has a mere right, to. the recove):"y of damages for past infringejurisdiction. Ulman v. Chickering, .33 Fed. 582; ments, equitY. is. Burdell v. ComstOCk, 15 Fed. 395; Root v. Rallroad Co., 105 U. S. 189;

468

'f"

I'EDERAL WOltTER,

63.

Spring Co.,. 13 Fed. 446; Jenkins v. Greenwald, 2 Fish. Pat. Cas. 87,' Cas. No.7,2fY,!; Hayward v. Andrews, 12 786. Where the blll illtlled late for a injunction to issue before the expiration of theter!;l1 Ilecured by the patent; and the recovery o,f damages would afforq,. llde.lI\la,te ,rtlli.e.f,. jUr,iSdiC,U.on,',. ,.,l.n equity does not .. exist. Clark v. . .. .. Wooster, 119 U. S. 322, 7 sup: Ct. 217; ,Mershon v. Furnace Co., 24 Fed. 741; D!1vi$ ,v.$Jtlith, l\} Fed.l:!23; v. Comstock, 15 Fed. 395; Racine .· 27 Fed. 367·. It has been held Seeder Co. v; Joliet Wire Check that a. days befOre #lepatent expired should be dismissed. )i'u:rnace Co., sllPra. .Where a, bUI is filed tlve .days before the expiration of ,tlle term, and noeltort is made to obtain an injunction, the prayer for WlIl be held M a mere pretext, and the case not of eqUitable. cOgD, ance.. Bur,dell. "v. Co.mat.OCk." supra. In.. Ra.cln,e Seeder Co. v. Joliet Rower 00,,' supra, Where the blIl was filed about two months be,.fote.·.thepa.tent exp,ire, th,.e. court expressed grave doubt Whether, .· . under the ,l'l).le In Root v. Ral,lrOlid Co" 105 U. S. 189. j-qrisdiction in equity the doubt. bt· the blll without prejudice to existed, and' an action 8:1: law:. WhlIe true that, If a blIl in equity to of lefterspatent is properly filed before the expirarestrain tion of the teI'Ul,the jurisdiction of tM court is not defeated by the mere expiration Of the patent by lapse of time before the final decree (Beedle v. Bennett, 122 U·. S. 71, 7 Sup. Ct., 1090). yet where a blIl is filed shortly before the expiration of the patent, and no application for a restraining order iii! made,. an'd ,.from the nature of the infringing acts complained of It is apparent thatllA', action on the caSe would afford adequate relief, the blIl ought to be ..It is not necesSl1l"Y' to determine whether the blIl filed by Walker ougl1t to have been dlsmisseq; in the view that is taken of the rights of the present plaintiff. Hisright,a' were acquired by an assignment two months after the patent had expired. It is true that the blIl states that the imProvement secured .by the patellt Was transferred, but, as the patent had already expired, nothing remained capable of assignment, except the mere right of action for the recovery of damages for past infringements. If the present plaintlffhad tlled an oHginal blll to enforce his rights acquired under the assignment,w,ade, as it was, after the expiration of the ,patent, a court of equity could 'bot have entertained jurisdiction. He, filed, nearly four monilis after the patent had e;x:p!red, an, original blll in the nature of a supplemental bUl, e;hibitlng a right ttl recover damages for past infringing acts acquiredUndel' f:I,D assignment made two months after the expiration of the patent. By such:, lI,ssignment the plaintiff acquired the right to recover damages only for past infringements, because ilie patent right-ilie franchisewas incapable 'Of transfer, since it had ceased to exist. Walker had no vested right in the remedy, which he could sell and assign to the present plaintiff. For the recovery of damages for past infringements, which alone passed to the assignee, ap.' action at law afforded the plaintiff adequate redress, and, in my judgment, the only redress to whicb he is entitled." .

Robert H. Parkinson, for appellant. S. R. AldeJ:1. andW. H. Shambaugh, for appellee. Before WOODS and JENKINS, Circuit Judges, and SEAMAN, District Judge. WOOD8"OircuitJudge (after stating the facts). In Clark v. Wooster, 119U. S. 322, 7 Sup. Ct. 217, the suit was upon a patent which had 15 ,days only to run when the bill was filed; no special e<lruitable relief was shown, except the. prayer for an by the rules ofthe court, only four days' notice of.an application.was required, it does not appear that an injunction or restraining order was asked for; yet the jurisdiction was upheld, the court saying that, "if the case was one for relief 'when the suit was instituted, the mere fact that the ground

BOSS

v.

CITY OJ' FT. WAYNE.

469

for such relief expired. by the expiration of the. patent would not take away the jurisdicti,on, and preclude the court from proceeding to grant the incidental relief which belongs to cases of that sort;" and a number of .lecisions are cited to show that this has often been done in patent cases. In Beedle v. Bennett, 122 U. S. 71, 7 Sup. Ct. 1090, where the suit was upon a patent which expired by its own limitation after the filing of the bill and before final decree, it is said that "as the patent was in force at the time the bill was filed, and the oomplainants were eutitled to a preliminary injunotion at that time, the jurisdiction of the court is not defeated by the expiration of the patent by lapse of time before final decree." See, also, American Bell Tel. Co. v. Brown Tel. & Tel. Co., 58 Fed.. 409; American Bell Tel. Co. v. Western Tel. Const. Co., Id. 410. When this suit was commenced, the patent in question had two months and twenty-two days to run. It was therefore clearly within the power of the court to grant a temporary injunction, if not to enter a final decree, before the patent should expire; and thougb no restraining order was issued, or perhaps could have been after the patent had expired, jurisdiction of the case was not lost on that account. Other objections to the original bill are urged, which are not tenable, or at least are not now available. A brief consideration of them will be enough. The city of Ft. Wayne, respondent, is located in Allen county, Ind., but is described in the bill as "located in the county of Vigo;" and upon that ground it is contended that the suit, as begun, was against another party, and that an amendment of the bill was nee.essary to make it a suit against the respondent. The erroneous statement in respect to the location of the city was simply a matter of misdescription, not affecting or, at ])lost, not determinative of the identity of the party. The fact that Ft. Wayne is in Allen county is probably a matter of judicial cognizance, notwithstanding the averment of the bill; but, to say the least, the respondent, having made a full appearance and pleaded to the merits of the bill, has waived the objection, and also the objection that the eOriginal complainant had an adequate remedy at law. Kilbourn v. Sunderland, 130 U. S. 505, 9 Sup. Ct.594. Walker was oompetent to prosecute the suit in his individual name, either upon the averments of his own bill, which showed him to be the holder of the legal title to the patent, or upon the bill of Ross, which shows that he held the title for the benefit of himself and others, of whom Ross was one, "with full power to maintain suit to recover for infringement, and to take all steps proper and necessary for the protection and enforcement of the rights, legal and equitable, held under sald letters patent." In Carey v. Brown, 92 U. S. 171, it is said: '
"The general rule Is that In suits respecting trust property, brought either by or against the trustees. the cestuis que trust, as well as the trustees, 4re necessary parties. Story, Elq. Pl. § 207. To this rule there are'several ex.ceptions. One of them Is that where the suit Is brought by the 'trustee to the trust property, or to reduce It to possesslon,M1d in DO wise atrects

47:0.;
.Ills; cefrtui,qpe .it is: un:Qeceesary to make. the latterv. a this kind. The 00b;ere was taken The o! the rolls 'If the objMtot'the bill were to recover the 'lund, with a' view to its administration by the C(lurt, the,pariiM interested mulitbe represented. B.ut merely seeks to itne'trust mOlleys, so .lJ,l;l :t9 the trustee hereafter to distJ:IJ:>cuW to the truStS It therefore unnecessary to the. court the parties 1>enaficially interested.' Such is now the llettledrble,ur·equi1:y pleading and practice." .
;', ,,' . "; : " !",;: :.

'.

v.

,;

U. S. 155,160:

.,'

caunotbe dQllbted that circumstances a tr\lstee may represent ,.111lil ,pelleficiaries .in all things. to their . common interest in the' trust'prQperfx. be invested. with such powers and subjected to such obl1giltionsthat those for whom he holds will be bound. by. what Is done against hIm.. lis well as by what is done by him. TM difficulty lies In ascertaining,'l\b;etper he occuplessueh a PQ$itiCln, not in determining its effecUf he ,If: P£lJ,ms, been made such la representative, it is well settled that his not ,necessary parties'to a suit by him agablst.a stranger to enforce tll.e·' v. Railroad Co., 5 Gray, 171; B.tfteld v. Taylor. B.eatty,l)l;.Campbell v. Railroad eo.; 1 !Woods, 376,Fed. Cas. No. 2,366; Ashton v. ,Atlalltic B.ank, 3 Allen, 220);, 01', to one by a stranger against him towhole or in part (;Rogers v. Rogers, 3 Paige, 379; Wakemanv. Grover, 4' Paige, 34; Winslow v. Rai1road Co., 4 Minn. 317 [Gil. 230]; Campbell v. Watson, 8 Ohio, 500). In such cases the trustee is in court for and on behalf .,and not· parties, are bound by the is ImpelYlhedfoJ.' fl'aud or collusion between him and the adverse party."

See,ialso"Tilghman'f.Prootor, 125 U. S.186, 8 Sup. Ct. 894; Rude v.West 1:t,130 u.s. 152;,9 'Sup.Ot. 463.. . ' to the title and entire interest of properly 8,1;\ complainant, and,. was entitled to theprosecutioon of the suit, 'ul1less, by reason of the expiratiQn .of. the patent, it wa.snecessary that this.suit should .orPe! ,dis.miSsed, allsubsEiquent remedies be sought in a court. of, .. having parted wit4 interest, and, with the. c()nsent Qf the other parties concerned, having divested himself. ?f.aAY trUst, in,\:lilwh.· favor, could :\lot. pl'Qfjlecute the suit further, .andal;>ittement, w:as)nevitable, unless a .new plaintiff could be SUbstituted. The. to introduce new or to substitute one party for another, in equity, when there .has been a challge of interest pendin.gthe suit, is lilO well recognized that the bqolrs trea:tnot 80 mqcl!. of the right as of the method of aCeompl,ishing It is done either by a supplemental bill, orpy an 'original, bill .iQ natqreof a supplemental bilI,--the fqrmer applicable·PNperly to th()se cases where the same parties or the, /ilame iJlterests remain before tll,ecourt, wh,ile the new. interests ansmg .from, eve:t;ltsfsillce .themstltutlon of the SUlt, are brought before .. Eq. Pl. §345. If a complainant, suing in. his own right, varts with less than his, entire interest, or interest but he is ,,not the 8ple complalPapt, ,1# .Cl;lse may besupphed by means of Po supplemental biil. ,,:. Id.§§346-348. But if a .sole eomplainant suing"inhisowJi right, is deprived of his whole interest, as in the-

c0

ROSS V. CITY Ol!' FT. WAYNE.

471

case of bankruptcy, or if he assigns his whole interest to another, he is no longer able to prosecute the suit, for want of interest, and the assignee may be made complainant in his stead; but, as the title of the latter may be litigated, the substitution must be accomplished by means of an original bill in the nature of a supplemental bill. Id. § 349; 2 Daniell, Ch. Pl. & Pl'. C. 33. The dispute here, however,is not over the general rule. The contention is that, as the patent in this case had expired before Walker's transfer to Ross, nothing remained which was capable of assignment, except the mere right of action for past infringements; that the patent right was incapable of transfer, since it had ceased to exist; and th'at Walker had no vested right in the remedy, which he could sell and assign to the present plaintiff. Broadly stated, that means that a complainant in equity may not transfer to another his interest in the subject-matter of the contest, and confer upon the assignee the right to prosecute the suit to a decree upon the merits, if, by reason of events subsequent to the bringing of the suit, the ,controversy has so changed as to be the subject only of an action at law. The serious consequences of such a restriction upon the right of a complainant to sell his interest in the subject-matter of litigation, and to have the purchaser substituted as complain· ant, are obvious. In every such instance an assignment by a sole complaillarit, or by all of the complainants, to a stranger, would be followed necessarily by a dismissal of the suit at the complainant's costs. If in a federal court, and the jurisdiction dependent on citizenship, the assignee might be compelled to go with his .case at law into a state court; and if, pending the suit in equity, the right of action at law should have become barred by the lapse of time, the complainant, whatever his original equities, might as well abandon his case as attempt a transfer, which could benefit no one but his adversary in the litigation. No authority directly in point upon the question has been cited, or has come under our observation, but an analogous question has been deterinined in numerous cases where the jurisdiction, dependent originally upon diverse citizenship, has been maintained notwithstanding changed relations of the parties, which, if existing at the beginning, would have made jurisdiction impossible. A bill of revivor, for in· stance,maybe brought by one who could not have brought the original suit. Clarke v. Mathewson, 12 Pet. 164. And supplemental or ancillary proceedings, though between parties of whom the court in the first instance could not have taken jurisdiction, are treated as dependent upon the suits out of which they grew. Freeman v. Howe, 24 How. 450; Minnesota Co. v. St. Paul Co., 2 Wall. 609; Krippendorf v. Hyde, 110 U. S. 276, 4 Sup. Ct. 27; Root v. Woolworth, 150 U. S. 401, 14 Sup. Ct. 136. If, in this case, after the expiration of the patent, Walker had died, it is clear that the suit could have been revived and prosecuted in the name of the legal representative (Clarke v. Mathewson, supra), or in case of bankruptcy the assignee, by means' of a supplemental bill, could have taken the benefit and -control of the proceedings; and we think it equally regular, where the complainant has made a voluntary transfer' of his title and in-

472
.terestto()ne whol15a.illtr1aJ;J.ger to the suit, tha,t the latter shall be into the place 'of the original .complaina,nt. The substitu· tion'· of Ross as complainant, wetbink, would have been proper if Walker, besides holding the legal title, had owned the entire '.beneficial interest in the patent. the others beneficially upon a full.statement of the facts, would have been proper, though not neceesary, co-complainants in the original bill. If they had been, and'there had been the same transfer of interest whicb,is shown to have occurred, a supplemental bill only would have been necessary in order to dismiss Walker from the record, and to enable the others interested to prosecute the suit; but Walkel'having brought the suit as if in his own right alone, and having transferred his interest and title to Ross, it was necessary and p1'Oper that the latter should come in under an original bill in the; nature of a supplemental bill, and having done so he is, in our. opinion, entitled to prosecute the action to the end, as if he had begun it. The decree below, should be reversed, and the order sustaining the demurrer to Ross' bill set aside, and it is so ordered.
UNITED STATES' v. HALL et oJ. (01rcutt Court or Appeals, FI1'Ilt.Circult. Ma.y 115. 1894.)
No. 85.

L

Owners. or a: vessel, who scuttle and, sink her In a. harbor while on fire, for the .purPO!l6· o:t sav\I\g. her rigg1ng,a1j.d. spars and. abandoning her to the und,er'Wpters,. may be compelled to remove the hull, as an obstruction to naviga.titJn, under Act Sept. 19, 1890, § 10. I. APPEAu-lRlIi'B:EARING.' . ·' A rehearing will not be ,granted, ordinarily, for causes not brought to the attention o(tbe the original a:rgument, or by the petitioner's brief..
Appeal' fro.fu the Circuit Court of the United states for the District of Maine. . ' .' .This was a'shit by the' United States against Hudson G. Hall and others to corQ.pel rewoval of .an obstruction to navigation. The circuit court disDlissed t,he bill, and a decree for defendants was en· tered thereon. The States appealed. Jaaac W. I)yer, for tlle United States. 'William H. folger and Benjan;J.in .Thompson,fol' appellees. Before PUTNAM, Oircuit Judge, and NELSON and ALDRIOH, . ,District J udge8. ALDRICH" District Judge. This. is a bill in equity based., upon the act of cl>llgress of. September 19, 1890 (26 stat. and instituted under the direction of theattouney general of the United to remove the hull of a vessel, States, toeompel the. which, it is claimed, exists as an obstruction to navigation, in Rockland harbor, on the coast of Maine, and comes by. appeal from the circuit court for that district.

NAVIGABLE WATERS-OBSTRUCTION BY SUNKEN VESSEL ){OVAL.

COMPELLING

RJIo