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spective of the citizenship of the parties when the unfair competition was incidental to the infringement.106 For example, an imitation of the form 107 and design,108 and of pictures of the device in catalogues.100 When the requisite diversity of citizenship exists, a bill seeking these two kinds of relief can be sustained.110 But not, when neither party is a resident of the district and the acts of unfair competition were committed elsewhere.111 Where there was no diversity of citizenship it was held when the patent was sustained and its infringement found, that profits and damages for unfair competition might be included in the accounting.112 But where relief because of alleged infringement of a patent was denied, courts have held that they had no jurisdiction to consider a cause of action founded upon unfair competition 113 in the same. Under the former practice

Fed. 664; C. L. King & Co. v. Inlander, 133 Fed. 416; Cushman v. Atlantis Fountain Pen Co., 164 Fed. 94; Mecky v. Grabowski, 177 Fed. 591; National Casket Co. v. N. Y. & Brooklyn Casket Co., 185 Fed. 533; Malinson v. Ryan, 242 Fed. 951. See supra, §§ 24, 142. See, however, Keasby & Mattison Co. v. Phillip Cary Mfg. Co., 113 Fed. 432; C. L. King & Co. v. Inlander, 133 Fed. 416.

106 T. B. Woods Sons Co. v. Valley Iron Works, 166 Fed. 770; Lovell-McConnel Mfg. Co. v. Automobile Supply Co., 193 Fed. 658; Climax Lock & Ventilator Co. v. Ajax Hardware Mfg. Co., 192 Fed. 126; Sayre v. McGill Ticket Punch Co., C. C. A., 200 Fed. 771. Farmers' Handy Wagon Co. v. Beaver Silo & Box Mfg. Co., C. C. A., 236 Fed. 731. K. W. Ignition Co. v. Temco El. Motor Co., C. C. A., 243 Fed. 588; Detroit Show Case Co. v. Kawneer Mfg. Co., C. C. A., 250 Fed. 234. Contra, H. D. Smith & Co. v. Southington Mfg. Co., 235 Fed. 160; Schrauger & Johnston v. Phillip Bernard Co., 240 Fed. 131;

Unit Const. Co. v. Huskey Mfg. Co., 241 Fed. 129; Mallinson v. Ryan, 242 Fed. 951.

107 T. B. Woods Sons Co. v. Valley Iron Works, 166 Fed. 770; Lovell-McConnell Mfg. Co. v. Automobile Supply Mfg. Co., 193 Fed. 658. Contra, H. D. Smith & Co. v. Southington Mfg. Co., 235 Fed.

160.

108 Lovell-McConnell Mfg. Co. v. Automobile Supply Mfg. Co., 193 Fed. 658.

109 Climax Lock & Ventilator Co. v. Ajax Hardware Mfg. Co., 192 Fed. 126.

110 Miller Rubber Co. v. Behrend, C. C. A., 242 Fed. 515.

111 Woerheide v. H. W. JohnsManville Co., 199 Fed. 535.

112 K. W. Ignition Co. v. Temco El. Motor Co., C. C. A., 243 Fed. 588; Detroit Showcase Co. v. Kawneer Mfg. Co., C. C. A., 250 Fed. 234; Geneva Furniture Mfg. Co. v. S. Karpen & Bros., 238 U. S. 254.

113 New Departure Mfg. Co. v. Sargent & Co., C. C. A., 127 Fed. 152, 155, 62 C. C. A. 266; Schiebel Toy & Novelty Co. v. Clark, 217

it was held as follows: A bill to set aside a contract for a partnership in royalties, which also prayed an account of matters collected under a verbal understanding before the date of the contract, is not multifarious; 114 nor a bill for an infringement, which also pleads a contract, in which it is alleged that defendants have agreed not to contest the validity of the patent.115 A supplemental bill against a new defendant, to whom the original defendant had transferred its property, pending the suit, which prayed an injunction against the use of plaintiff's patents, and that it be obliged to pay the damages caused by its predecessor's infringement; was multifarious. 116 Where a bill set out a contract relating to certain patents, and asked specific performance thereof against several parties, but also contained expressions looking to relief, as in a suit for infringement, it could not be sustained as a bill with a double aspect; because the determination of who are proper parties must be made from different standpoints in the two kinds of bills.117

The Act of October 6, 1917, against Trading with the Enemy provides: "The owner of any patent, trade-mark, print, label, or copyright under which a license is granted hereunder may, after the end of the war and until the expiration of one year thereafter, file a bill in equity against the licensee in the District Court of the United States for the district in which the said licensee resides, or, if a corporation, in which it has its principal place of business (to which suit the Treasurer of the United States shall be made a party), for recovery from the said licensee for all use and enjoyment of the said patented invention, trademark, print, label, or copyrighted matter: Provided, however, that whenever suit is brought, as above, notice shall be filed with the alien property custodian within thirty days after date of entry of suit: Provided, further, That the licensee may make any and all defenses which would be available were

Fed. 760; H. D. Smith & Co. v. Southington Mfg. Co., 235 Fed. 160; Detroit Showcase Co. v. Kawneer Mfg. Co., C. C. A., 250 Fed. 234. See U. S. E. Bolt Co. v. H. G. Kroncke Hardware Co., C. C. A., 234 Fed. 868; Koenig v. Morris, 243 Fed. 619. Where after finding that there was no infringement the

no license

court held it had no jurisdiction to direct a partnership accounting.

114 Patton v. Glantz, 56 Fed. 367. 115 Dunham v. Bent, 72 Fed. 60. 116 Western Telephone Mfg. Co. v. Am. El. Tel. Co., 137 Fed. 603.

117 American Box Mach. Co. v. Crosman, C. C. A., 61 Fed. 888; S. C., 57 Fed. 1021.

granted. The court on due proceedings had may adjudge and decree to the said owner payment of a reasonable royalty. The amount of said judgment and decree, when final, shall be paid on order of the court to the owner of the patent from the fund deposited by the licensee, so far as such deposit will satisfy said. judgment and decree; and the said payment shall be in full or partial satisfaction of said judgment and decree, as the facts may appear; and if, after payment of all such judgments and decrees, there shall remain any balance of said deposit, such balance shall be repaid to the licensee on order of the alien property custodian. If no suit is brought within one year after the end of the war, or no notice is filed as above required, then the licensee shall not be liable to make any further deposits, and all funds deposited by him shall be repaid to him on order of the alien property custodian. Upon entry of suit and notice filed as above required, or upon repayment of funds as above provided, the liability of the licensee to make further reports to the President shall cease.

If suit is brought as above provided, the court may, at any time, terminate the license, and may, in such event, issue an injunction to restrain the licensee from infringement thereafter, or the court, in case the licensee, prior to suit, shall have made investment of capital based on possession of the license, may continue the license for such period and upon such terms and with such royalties as it shall find to be just and reasonable.118

"Any enemy, or ally of enemy, may institute and prosecute suits in equity against any person other than a licensee under this Act to enjoin infringement of letters patent, trade-mark, print, label, and copyrights in the United States owned or controlled by said enemy or ally of enemy, in the same manner and to the extent that he would be entitled so to do if the United States was not at war: Provided, That no final judgment or decree shall be entered in favor of such enemy or ally of enemy by any court except after thirty days' notice to the alien property custodian. Such notice shall be in writing and shall be served in the same manner as civil process of Federal courts.119

118 40 St. at L. 416 Ch. 106, Comp. St. § 31152 ee (f).

119 Ibid g.

§ 147. Bills to compel the issue of patents and bills to obtain relief against interfering patents. Whenever a patent on application is refused, either by the Commissioner of Patents or by the Supreme Court of the District of Columbia upon appeal from the Commissioner, the applicant may have remedy by bill in equity; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that such applicant is entitled, according to law, to receive a patent for his invention, as specified in his claim, or any part thereof, as the facts in the case may appear. And such adjudication, if it be in favor of the right of the applicant, shall authorize the Commissioner to issue such patent on the applicant filing in the patent-office a copy of the adjudication, and otherwise complying with the requirements of law. In all cases, where there is no opposing party, a copy of the bill shall be served on the Commissioner; and all the expenses of the proceeding shall be paid by the applicant, whether the final decision is in his favor or not." 1

"Whenever there are interfering patents, any person interested in any one of them, or in the working of the invention claimed under either of them, may have relief against the interfering patentee, and all parties interested under him, by suit in equity against the owners of the interfering patent; and the court, on notice to adverse parties, and other due proceedings had according to the course of equity, may adjudge and declare either of the patents void in whole or in part, or inoperative, or invalid in any particular part of the United States, according to the interest of the parties in the patent or the invention patented. But no such judgment or adjudication shall affect the right of any person except the parties to the suit and those deriving title under them subsequent to the rendition of such judgment."2 Such a suit may be brought where there is an interference between patents granted to the same inventor al

§ 147. 1U. S. R. S., § 4915, 5 Fed. St. Ann. 507, Pierce's Fed. Code, 8780; Runstetler v. Atkinson, 23 Off. Gaz. 1025; Greeley v. Commissioner, 6 Fisher, 675; s. C., 1 Holmes, 284; Ex parte Arkell, 15 Blatchf. 437; Butterworth v. Hill,

114 U. S. 128, 29 L. ed. 119; Hill v. Wooster, 132 U. S. 693, 33 L. ed. 502.

2 U. S. R. S., § 4918, 5 Fed. St. Ann. 526, Pierce's Fed. Code, § 8783.

though an adjudication of such interference makes the latter patent void. The act creating the Court of Appeals for the District of Columbia, with power to entertain appeals from the decisions of the Commissioner of Patents in the cases mentioned in these two sections of the Revised Statutes, did not repeal them. Such a bill should not be brought until the determination of an appeal to the District Court of Appeals," and it is the safer practice not to file the same until after the Commissioner has obeyed the mandate of that appellate court. But where adverse decisions in interference proceedings have been made against an applicant for a patent by the examiners, the Patent Commissioner and the Court of Appeals of the District of Columbia on appeal, he may maintain a bill in equity in a District Court of the United States without waiting for the formal action of the Patent Office refusing his application.7

8

Where there is no opposing party, a copy of the bill should be served on the Commissioner, and it is the better practice to name him and perhaps also the Secretary of the Interior, as parties defendant. The Commissioner of Patents is not a necessary party when there is a party to oppose the bill to compel the issue of a patent, or in an interference case, 10 but when the patent has been issued and assigned, the assignee is a necessary party.11 When there is an opposing party, costs are usually awarded to the one who prevails.12

The fact that the two parties to the interference proceeding have united the interests, and neither of them has opposed the bill, does not deprive the District Court of jurisdiction, nor, at least when that matter is disclosed to it, does it render its decree subject to collateral attack. 13

3 Keystone Trading Co. v. Zapata Mfg. Co., 210 Fed. 456.

4 McKnight v. Metal Volatilization Co., 128 Fed. 51; Dover v. Greenwood, 143 Fed. 136.

5 Smith v. Muller, 75 Fed. 612; McKnight v. Volatilization Co., 122 Fed. 51.

6 Bernardin v. Northall, 77 Fed. 849.

7McKnight v. Metal Volatization Co., 128 Fed. 51.

Fed. Prac. Vol. I-54

8 Gandy v. Marble, 122 U. S. 432, 7 Sup. Ct. 1290, 30 L. ed. 1223; Davis v. Garrett, 152 Fed. 723, 725. 9 Graham v. Teter, 25 Fed. 555. 10 Butler v. Shaw, 21 Fed. 321. 11 Graham v. Teter, 25 Fed. 555. See Illingworth v. Atha, 42 Fed. 145.

141,

12 Butler v. Shaw, 21 Fed. 321. 13 Schmertz Wire Glass Co. V. Western Glass Co., 178 Fed. 973; s. c., 178 Fed. 977.

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