GAMEWELL FIRE-ALARM TEL. CO.
V.
CITY OF CHILLICOTHE.
351
WHEELER, D. J. This suit is bronght upon letters patent No. 68,656, dated September 10, 1867, and Oliver Salgee for improvements in hose couplings, and owned by the plaintiffs. Manufacture and sale of the patented devices are admitted; the only defence maae is that what was done, was, as is claimed, done under a license. This is an affirmative to be made out by proof. That part of the /l-nswer setting it up is mere pleading, and not evidence. After car.e· ful examination of the proofs it does not appear, by any, fair preponderance of evidence, that the parties mutually stood and agreed that the defendants might make use of the patented invention, nor that the ,plaintiffs gave them war· tantably to understand that they might,. on which understanding they acted. What they did appears to be a wrongful infringement instead of a· matter of contract. Let there be flo decree for an injunction and an account, with costs.
GAJmWELL
FIRE-ALAnM TELEGnAPH CO. COTHE.(OiIrcuit Oowre, 8. D. Ohio.
CITY
011'
CHILLI-
May, 1881.)
1.
PATENTS-PLEADING-MULTIll'ARIOlJaNEBS-SEVERAL DISTINCT PATENTS IN ONE BILL.
On demurrer, & bill in equity setting out three distinct patents for improvements in fire-alarms and fire-alarm apparatus, but alleging that all said improvements are used in' the infringing machine of defendant, is not bad for multifariousness.
In Equity. Demurrer to Bill for Multifariousness. This bill is brought for infringement of letters patent, and sets out three separate and distinct patents. The first pl!otent, No. 76,654, dated April 14, 1868, was issued to Charles G. Page for new and useful improvements in induction-coil apparatus and circuit breakers, and afterwards Priscilla W. Page. as administratrix of C. G. Pa.ge, and the Western Union Telegraph Company. as assignee, became exclusive owners of said inventions and letters patent. Afterwards, on the tenth day of October, 1871, re-issued letters patena "Reported by Messrs. Florien Glanqne and 1. C. Harper, of the Clnclnnati bar.
852
FEDERAL REPORTER.
for the same inventions were issued to Priscilla W. Page, administratrix of C. G. Page, assignor of half her right tQ the Western Union Telegraph Company, and marked re-issue No. 4,588. Afterwards, on the second day of July, 1877, the Gamewell Fire-Alarm Telegraph Company became by mesne assignment the owners and holders of the exclusive right and license to make and use, and to sell to others to use, all or any of the inventions described and claimed in said letters patent, "for the following purposes and no others; that is to say, for the purpose of constructing and operating telegraph wires and instruments within the corporate limits of any of the incorporated cities or nllages in any of the states and territories of the United States, when said telegraph lines and instruments are used solely by the municiplJ,1 authorities of the city, village, or other municipality where the same are erected for fire-alarms, or the transmission of police or other municipal intelligence. " The second patent was issued to J. N. Gamewell, dated April 11, 1871, No. 113,649, for a new and useful improvement in fire-alarm telegraph apparatus. Afterwards, by mesne assignment, the GamewellFire-Alarm Telegraph Company became sole owner of said letters patent. These letters patent were re-issued to the Gamewell Fire-Alarm Telegraph Company, bearing date September 9, 1879, and numbered 8,891 The third patent was issued to Moses G. Crane and Edwin Rogers, July 6,1869, No. 92,275, for a new and useful improvement in automatic signal boxes for fire-alarm telegraphs. The Gamewell1<'ire-Alarm Telegraph Company, by mesne assignment, oecame sole owner of said letters patent. These letters patent were re-issued to the Gamewell Fire-Alarm Telegraph Company, and marked re-issue No. 4,513, dated August 15, 1871. These re-issued letters patent, No. 4,513, were surrendered, and other letters patent were issued to the Gll.ll1ewell Fire-Alarm Telegraph Company, and marked re-issue No. 8,896, and dated sixteenth day of September, 1879. The bill shOws that the Gamewell Fire-Alarm Company is the sole owner of re-issued letters patent No. 8,891, and No. 8,896, a.nd the exclusive owner of re-issue No. 4,588, for a limited but definite purpose, viz. : the constructing of fire-alarm telegraph apparatus. . The bill alleges that the defendants, in violation of the rights of the Gamewell Fire-Alarm Telegraph Company, and in infringement of the aforesaid re-issued letters patent Nos. 8,891 and 8,896 and 4,588, unlawfully and wrongfully and in defiance of the rights of the Gamewell Fire-Alarm Telegrapn Company, make, construct, use, and vend to others to 'be used, the said inventions, and did make, construct, use, and vend to others to be used, fire-alarm telegraph apparatus made according to and employing and containing said inventions, and that it continues so to do, and that it is threatenmg to use the aforesaid infringing apparatus in large quantities. The bill further alleges that defendant has used and is using large quantities of said fire-alarm apparatus, and prays ,a discovery thereof. The bill prays that the" defendant, the city of Chillicothe, its officers, servants, agents, attorneys, and workmen, and each and every of them,
GAMEWELL FIRE-ALARM TEL. 00. Vi OITY OF OHILLIOOTHE.
353
may be restrained and enjoined provisionally and perpetually, by the order and injunction of this honorable directly or indirectly making, constructing, using, vending, delivering,. working, or putting into practice, operation, or use, or in anywisecountetfeiting or imitating, the said inventions, or any part thereof, or any fire-alarm apparatus made in accordance therewith, or like or to those which it is now, using." A demurrer is filed to the bill for multifariousness"in this: "that the same forth several and unconnected grants of letters patent to various persons, covering- distinct inventions, and asks relief for the alleged infringement thereof jointly."
Jeptha D. Garrard, for complainant. Banning if Davidson and L. M. Hosea, for defendant. SWING, D. J. The rule of pleading as to multifariol1sness is founded on convenienlle-convenience to the defendant. McLean, Assignee, v. Bank of Lafayette, 4 McLean, 418; lows v. Fe'llows, 4 Cow. 682. . '. , .This rule forbids the joiningbf distinct and independent matters in one bill, and thereby confounding them ; as, for example, the uniting in one bill of several matters perfectly distinct and unconnected against one defendant, cit'thedemand of several matters of different natures against several defendants in the same bill. Story's Eq. PI. 271; Mitfbrd's Eq. PI. 181. Whet,her this rule applies to any particular bill or not is a question of fact, as to the nature and extent of interest of the complainant, or some of the complainants, in the causes 'of action; or of the defendant, or some of the defendants, as to the nature of the causes of action, whether they are distinct in character as well as independent in form, as to the scope of the relief prayed. Story's Eq. PI. !l38, 540,280. To lay down any rule applicable to all cases cannot well be done. ld. 539. The cases upon the subject are various, and the courts, in deciding them, seem to have considered what was convenient under particular circumstances, rather than to have laid down any absolute rule. Campbell v. Mackay, 1 Mylne & Craig, 603. But it may be drawn from the cases, and is in accord. ance with the reason of the rule, that the test of multifariousness is: What is the burden imposed on the defendant? to what defence is he forced? can he make one defence to the ,v.7,no.3-23
854:
FEDEBAL.R;Ep()RTEB.
whole bill? Attorney. General v. St. John's College, 7 Siro. 241; Story's Eq. PI. 580, 540; Daniell's Ch. Pro 334-346, notes tltnd 2. The facts in this case present no complication. The bill shows that re-issues Nos. 8,891 and 8,896 are for improvementsin'nre alarms, and that the complainant has the 'tight, t;rnder ie-issue4,SS8, of constructing apparatus for ,:Ore alarms and the,' transmission of municipal intelligence, and alleges that the defendant uses each of these inventions in one machine-usesth.em all in the same machine. It is plain ,that the use of, all these inventiotls together, to constitllt.e,a.machine, is tlie causeo£. action setout in the bill; the cOI;lstruction ,of a fire alarm,,lluch as defendant now bE1ing the injury complained ,of and against .which an injunction is prayed. Discovery is asked, not of how many lna. chipes containing separately the inventions in the several patents mentioned, but how many machines containing aU th,esEl inventions used together to construct the machine, have .been. A single defence-we do not make such a machine-meets the whole bill in its allegations and prayer founded on the allegations. The mere setting out of more than one letters patent in a bill does not of itself render the bill multifarious. Case v. Redfield, 4 McLean, 526; Nourse v. Allen, 4 Blatchf. 876. And it may be said generally that a demurrer for multifa. riousness will not lie to a bill founded on several letters pat. ent, wbere all the inventions are set out as constituting one cause of action, and the prayer relates singly, as to discovery and remerly, to a machine constructed according to and containing all said inventions. Where the discovery is prayed for under special interrogatories as to each letter patent in a manner so particular as to each invention that it is evident on the face of the bill that the relief sought is for infringement of each and every invention, and not for an injury arising from the making and using one machine constructed according to such letters patent, the bill is demurrable. To escape the objection of multifariousness such a bill
NATIONAL MANUF'a CO. V. MEYERS.
855
should aver that said inventions are capable of conjoint as well as separate use, and are in fact so used by defendant.. Nellis v. Lanahan, 6 Fisher, 286. . In the bill under consideration the letters patent are properly joined, and, in fact, constitute one and the same cause of action. The demurrer is, therefore, overruled. BAXTER, C. J., concurred. NOTE. Pleasants v. GZassCock, 1 Bmedes & Marsh. Ch. (17 Ch. R Miss.) 17; "nick v. Dick, 1 Hogan, (Roils Court, heland,) 290; SalfJedgev. Hyde, 5 Maddux, 138; DafJOU6 v. Fanning, 4 John. Ch. 199; Varick v. Smith, I) Paige, 160; Mitford's Eq. PI. § 181, note: Hayes v. Dayton, (S. D. N. Y., Nov., 1880, Blatchford, J.,) 18 O. G. 1406.
NATIONAL MANUF'a
Co. v.
MEYERS.-
(Circuit Court, S. D. Ohio.
May 26, 1881.)
PATENTS-LICENSEE ESTOPPEL.
DENYING VALIDITY Oil' PATENT-
In a suft in equity, for an account of profits and damages, and for an injunction for infringement of a patent, a licensee is not estopped from denying the validity of the patent. 2. SAME.
In such suit the respondent may answer that he was acting under a license, and unless the recitals or covenants of the instrument forbid, he may also deny the validity of the patent; such defences are not inconsistent.
In Equity. Bill for infringement of patent. Motion to withdraw replication. D. Thew Wright and Willimn B. Bumet, for complainants. James ]{oore, contra. SWING, D. J. The bill alleges that on the twentieth day of June, 1874, there was issued to Jacob H. Burtis letters patent for new and improvements in fly-traps, of which he was the original and first inventor.
"Reported by !t..Jssrs. :Florien Giauque and J. C. Harper, of the Cincinnati bar.