The City Bank of New York v. Skelton.

§ 806; 2 Kent's Comm. 567, 568; Jeremy's Eq. 347; Eden on Inj. 1st -Am. ed. 242; Crawshay v. Thornton, 2 Mylne & Craig, 1; Atkinson v. Manks, 1 Cowen, 691.) The defendant Yonge insists that the rule does not apply to bailees or to bankers, but that they are bound by the general principles of law to restore to the bailor the deposit made with them. (2 Story's Eq. Jur. §§ 816, 817; Story on Bailments, § 110.) But the cases which seemingly support that objection are counterbalanced by a weightier array of authorities, both English and American, to the contrary. (2 Kent's Comm. 566 to 568; Atkinson v. Manks, 1 Cowen, 691; Schuyler v. Pelissier, 3 Edw. Ch. R. 191; Birch v. Corbin, 1 Cox's Ch. Cases, 144; Jeremy's Eq. 348.) The rule has been directly sanctioned in the cases of funds deposited in a bank, (Birch v. Corbin, 1 Cox's Ch. Cases, 144,) and with a stakeholder (Id. 145;) and it has been applied in behalf of a captain of a vessel, against whom there were adverse claims upon bills of lading. (Lowe v. Richardson, 3 Madd. 277.) Each of these cases is strong in analogy to the present one, and I should feel no difficulty in declaring, upon the general principles of Equity jurisprudence, that a bank may be entitled to relief by bill of interpleader against separate and adversary parties who claim title to moneys therein deposited.

But there is an impediment to the enforcement of that principle by this Court in the case now before it. One of the suits pending, against which the plaintiffs ask relief, is prosecuted in the State Court of Chancery, and this Court is clothed with no power to restrain or interfere with a suit so situated. A Court of the United States, in executing a jurisdiction vested in it, may undoubtedly act upon parties who are suitors in a State Court in relation to the same subjectmatter, so far at least as to compel their submission to such judgment as the United States Court may render in a case of which it has cognizance. But, even then, it cannot interdict their prosecuting their suit in the State Court, much less control any action pending in such Court. It is understood that

The City Bank of New York v. Skelton.

the State Courts uniformly adopt the same doctrine in respect to Courts of the United States. Here it is to be assumed that the State Court is competently possessed of the case before it, and a decree of this Court compelling the plaintiffs and one of the defendants in that Court to interplead here, would be an exercise of that authority and control over the State Court itself which can only be allowed to a tribunal of general jurisdiction under the same Govern

ment.

But the plaintiffs have made out a case of the most stringent equity against allowing Yonge to proceed in his suits in this Court against them, while the suit brought by Skelton and Frazer is pending in the State Court for the same subject-matter, and to which he is a party defendant. The conflicting rights of these two prosecuting parties are directly at issue in the suit in the State Court, and that forum has full capacity to decide the right between them. There the controversy should be continued so far as these plaintiffs are to be affected, and, with the determination of that case, they should legally know to whom they can rightfully deliver over the funds in their possession.

I think the cases of Mallow v. Hinde, (12 Wheat. 193,) and Dunn v. Clarke, (8 Peters, 1,) furnish a guide to the order proper to be made in this case. The former was a case similarly circumstanced to the present one, and is an authority that this Court may, in its discretion, restrain the prosecution of the suits brought by Yonge, until he has had an opportunity to settle his controversy with Skelton and Frazer in the suit in the State Court of Chancery.

I shall accordingly order an injunction to that effect, giving to the parties the option to consent, by stipulation, to interplead in this Court on the subject-matter, and thus place it wholly under the control of this Court.*

Order. The bill in this case having been read, and counsel for the respective parties having been heard, and the premises being fully considered, and it appearing to the Court that the plaintiffs hold the assets and funds in the bill mentioned for the true owner, without having or claiming any right or interest

Suydam v. Day.

DAVID L. SUYDAM 28. HORACE H. DAY.

Under the Patent laws of the United States, an assignee of a patent must be regarded as acquiring his title to it, with a right of action in his own name, only by force of the statute.

Such exclusive right of action exists in favor of a sole assignee only in two cases, namely, where he acquires, by assignment, the whole interest in the patent, or a grant or conveyance of the whole interest within some particular district or territory.

Under §§ 11 and 14 of the Act of July 4th, 1836, (5 U. S. Stat. at Large, 121 123,) an action is given only to such party, (composed of one or more persons,) as possesses the whole interest.

The subject-matter of a patent is not partible except in respect to territorial assignments.

therein, and that they are ready and willing to deliver the same over to whoso ever may have right thereto; and it appearing to the Court that the defend ants Elizabeth Skelton and Mary Ann Frazer have heretofore filed their bill in the Court of Chancery of the State of New York against the plaintiffs and the defendant Philip R. Yonge, alleging the full right and title to the said funds and assets to be vested in and to belong to the said Skelton and Frazer; and it appearing to the Court that the plaintiffs and the said Yonge entered their respective appearances in said suit in said Court of Chancery, and that said suit is still pending and undetermined; and it further appearing to the Court that after such suit was instituted the said Yonge commenced in this Court, in his own name, two separate actions at law against the plaintiffs, one in trover, in which he seeks to recover the value of the said funds and assets, and the other in assumpsit, in which damages are demanded for the detention of the said assets, and that the plaintiffs have appeared in the said actions, and the same are yet pending and undetermined in this Court: It is, therefore, considered by the Court that the plaintiff's are entitled to relief in this Court in the premises; but, inasmuch as the suit instituted against the plaintiffs by the said Skelton and Frazer is prosecuted in the Court of Chancery of the State of New York, and the proceedings before that tribunal are not within the cognizance of this Court, or subject to its control, it is considered by the Court, that so much of the prayer of the said bill as seeks an interpleader in the premises, and prays the same to be decreed by this Court against the abovenamed defendants, ought not to be granted, and it is, therefore, or dered, that the same be denied. It is further ordered, that an injunction issue, according to the prayer of the bill, against the said Yonge, restraining him from further prosecuting his said actions at law, or either of them, instituted in this Court against the plaintiffs, until the final decision of the said suit pending in the Court of Chancery of the State of New York, unless the said Yonge and Skelton and Frazer shall, within twenty days from the date of this order, file their stipulation in writing in this Court, electing to interplead between themselves in this Court, in respect to the subject-matter aforesaid; and, in case of such interpleader between the said parties, it is ordered that the said plaintiff's thereupon pay into this Court the funds and assets aforesaid, first deducting therefrom such their costs and expenses as shall be allowed them by the Court.

Suydam v. Day.

Where a patent was granted for an improvement in the mode of preparing indiarubber with sulphur "for the manufacture of various articles," and S. became the assignee of the exclusive right to use the improvement "in the manufacture of shirred or corrugated india-rubber goods:" Held, that S. could not maintain an action in his own name alone for an infringement of his right by the manufacture of such goods.

(Before NELSON and BETTS, JJ., Southern District of New York, April 25th, 1846.)

DEMURRER to a declaration.

The action was case for the

infringement of Letters Patent. The plaintiff counted on two patents. The first count set forth a patent to Charles Goodyear, assignee of Nathaniel Hayward, granted February 24th, 1839, for an "improvement in the mode of preparing caoutchouc with sulphur, for the manufacture of various articles," and an assignment by Goodyear to the plaintiff on the 24th of May, 1844, of "the exclusive right, privilege, and license to use the said improvement in the manufacture of shirred or corrugated india-rubber goods," and alleged an infringement by "the manufacture of shirred or corrugated india-rubber goods." The specification of the said patent described the invention as an "improvement in the mode of preparing caoutchouc, gum-elastic or india-rubber, for the manufacturing of various articles in which that substance is used." The claim was "the combining of sulphur with gum-elastic, either in solution or in substance, either in the modes above pointed out, or in any other which is substantially the same, and which will produce a like effect." The second count set forth a patent to Charles Goodyear, granted June 15th, 1844, for an "improvement in indiarubber fabrics." The claims of the last-mentioned patent were: (1.) The combining of caoutchouc "with sulphur and with white-lead, so as to form a triple compound, either in the proportions herein named, or in any other within such limits as will produce a like result. And I will here remark, that although I have obtained the best results from the carbonate of lead, other salts of lead, or the oxides of that metal may be substituted therefor, and will produce a good effect, I, therefore, under this head, claim the employment

Suydam . Day.

of either of the oxides or salts of lead, in the place of the white-lead in the above-named compound." (2.) “In combination with the foregoing, the process of exposing the indiarubber fabric to the action of a high degree of heat, such as is herein specified." The second count also set forth an assignment by Goodyear to the plaintiff on the 24th of May, 1844, of "the sole and exclusive right to use, in the manufacture of corrugated or shirred india-rubber goods, the application of white-lead and the oxides of lead in connection with the application of artificial heat, and in combination with india-rubber and sulphur, in the manner and proportions set forth in the specification annexed" to the last-mentioned. patent, and averred that the said specification and the application for Letters Patent under the same were, at the time of the making of the assignment, on file in the Patent Office, according to law, and alleged an infringement by "the manufacture of shirred or corrugated india-rubber goods or fabrics."

The defendant demurred to both counts, and the plaintiff joined.

George Griffin and Francis B. Cutting, for the defendant.

The

Seth P. Staples, for the plaintiff. (1.) By the act of Congress, the plaintiff can maintain an action in his own name, for injury to his rights under the patents. He has the exclusive right to use the patents for his own profit. Under § 11 of the act of July 4th, 1836, (5 U. S. Stat. at Large, 121,) a party may sell any undivided part of his interest in a patent. right to sell is not confined to an aliquot or integral part of the patent, but applies also to the divisible properties of the invention. Section 14 of the same act also tends to support the idea that a person who has an exclusive right in a patent, may have a remedy by action, may disclaim, &c., and, under § 17, a bill in equity may be filed by "any party aggrieved.” (2.) The plaintiff can sustain this action on the general principles of the common law. It is an action on the case, and the law furnishes the remedy where the right is established.