an attorney in Washington and added to and executed in Cohoes the mistake is not an unnatural one. The agreement should be considered as if the number and date of the patent in controversy appeared in the first paragraph.

The only other question argued in the defendant's brief has referenee to the alleged title derived from a receiver in the State courts.

In the autumn of 1891 a judgment was recovered against A. H. New: ton, who then held the entire interest of the firm in the patents. Sup.. plementary proceedings were instituted and a receiver was appointed. The receiver was by order of the State court permitted to sell the interest of Newton in the patent in question. On the 30th of April, 1895, he sold to one Vermilyea, who on the 6th of May, 1895, sold to the defendant. This was subsequent to this action, which was begun. July 1, 1894. On the 1st of March, 1893, Newton assigned his interest in the patent to one Dooley, and on the 24th of February, 1894, Dooley assigued to the complainant. It is argued that the title of A. H. Newton vested in his receiver and is now owned by the defendant; that complainant has no title because the assignments under which she holds were made after the receiver had been appointed.

The agreement of March 6, 1889, though called an "exclusive license," is, in fact

an assignment, properly speaking, and vests in the assignee a title in so much of the patent itself, with a right to sue infringers * in the name of the assignee

alone. (Waterman v. Mackenzie, C. D., 1891, 320; 54 O. G., 1562; 138 U. S., 252.)

Section 4898, United States Revised Statutes, provides thatevery patent or any interest therein shall be assignable in law by an instrument in writing

made by the patentee or his assigns or legal representatives.

It would seem that the contention based upon the receiver's supposed title must proceed upon the theory that Newton obtained title under the agreement of 1889. If Newton had no title, surely his receiver acquired none. If Newton had title, it must be traced back to that agreement and upheld by sustaining the complainant's contention that Patent No. 301,087 was omitted by mistake. In other words, if the patent was correctly omitted the receiver gets no title, for Newton had none. If, on the other hand, the patent was assigned to Newton, no one could acquire title except by an assignment from Newton, his rep resentatives or assigns. In short, if the complainant has no title it is an end of the action. If she has a title which enables her to maintain the action, it is a title which cannot pass to a receiver in supplementary proceedings.

The court understands that this proposition is not seriously dis puted if it be assumed that the patent was actually transferred by the 1889 agreement; but it is said that the patent did not appear in that agreement. The right to have it inserted was an equitable right, which passed to the receiver and from the receiver to Buck. The court

cannot assent to this view. If there were no other objection, it enables the defendant to take advantage of his own wrong and actually profit by his neglect to do what it was clearly his duty to do. Equity will not permit a failure of justice upon such narrow grounds. As between the complainant and Buck, the assignment should be treated as having been made on the 6th of March, 1889.

It is unnecessary to determine what might have been the result had the State court by decree in equity compelled Buck to assign to Newton and Newton to the receiver, for no such decree was made. The receiver's title rests solely upon the order of the State court in proceedings supplementary to the execution.

The rule seems to be well settled that an assignment can only be made by the actual owner of the patent; that rights under the patent cannot be sold by a sheriff on execution and do not, like other incorporeal rights, vest in a receiver. They may, however, in a proper case be reached by creditor's bill. (Walk. on Pats., 3d ed., sec. 156; Rob. on Pats., sec. 766; Ager v. Murray, C. D., 1882, 188; 21 O. G., 1197; 105 U. S., 126; Gordon v. Anthony, 16 Blatch., 234, 248.) It is thought, therefore, that the defendant took nothing by his assignment from the receiver.

At all events every one who has a vestige of interest in the patent is now before the court, the mutual mistake in leaving out the patent in question from the 1889 agreement has been established beyond the peradventure of a doubt and almost without contradiction, the equities are with the complainant, and no serious objection can be urged to the settlements of the rights of all parties at this time upon equitable principles. What the defendant should have done in 1889 may be done now nunc pro tunc.

The royalties due to the defendant can be taken care of in the accounting.

The complainant is entitled to a decree in accordance with the prayer of the bill.

[U.S. Circuit Court-District of New Jersey.]

MATTHEWS & WILLARD MANUFACTURING COMPANY v. TRENTON LAMP COMPANY et al.

Decided March 24, 1896.

75 O. G., 674.

1. MILLER-DESIGN PATENT-LAMP-FOUNT HOLDER-BASE FOR LAMPS-VALID. Design Patents No. 22,422, dated May 9, 1893, for a lamp-fount holder, and Nos. 23,672 and 23,673, dated October 2, 1894, for bases for lamps, granted to John C. Miller, and Design Patent No. 23,671, dated October 2, 1894, for a lampfount holder, granted to John C. Miller and Edward Schmitz, Held to have been legally granted and to be valid.

2. DEFENDANTS-MISJOINDER-EMPLOYEE.

All parties interested in the subject-matter or issue of the suit must be made parties thereto; but employees receiving in return for their services fixed salaries are not such parties. Every agent, however, who performs acts of infringement and all officers who in the prosecution of business authorize said acts are responsible and should be enjoined.

3. DESIGN STATUTE-MEANING OF "EXPENSE."

The word "expense” in the statute relating to design patents means a “disbursement of money" and also "the employment and consumption of time and labor." To confine its meaning to the mere expenditure of money would be contrary to the purpose of the statute, which purpose is to secure to those who shall invent and produce a new and original design a monopoly in the design. 4. PATENT AS EVIDENCE THAT REQUIREMENTS OF STATUTE HAVE BEEN .COM. PLIED WITH.

Prima facie Letters Patent are evidence that all the requirements of the statute have been fully complied with, and if it be true that the patentee has been at no pecuniary expenditure in realizing the conception of the designs it follows, presumably, that no such expenditure was demanded by the circumstances. The burden of showing the necessity of such expenditure is upon the defendant in any case.

Mr. Charles L. Burdett and Mr. Lucien F. Burpee for the complainant.

Mr. Francis C. Lowthorp for the defendants.

GREEN, J.:

There are pending four suits between the parties complainant and defendant, which relate to and charge the infringement of certain patented designs for lamps or parts of lamps. Upon the argument they were treated as one controversy, and properly so, for while the several distinct designs are for specific and separate parts of a lamp it is perfectly feasible to arrange in any one lamp at least two of the designs, (if not more,) and the sale of a single lamp so prepared may involve the infringement of the designs in question.

The Letters Patent involved in this litigation are four in number and are as follows: first, No. 22,422, dated May 9, 1893, for a design for a lamp-fount holder; second, No. 23,671, dated October 2, 1894, for a design for a lamp-fount holder; third, No. 23,672, dated October 2, 1894, for a design for a base for lamps; fourth, No. 23,673, dated October 2, 1894, for a design for a base for lamps.

Patents No. 22,422, No. 23,672, and No. 23,673 were granted to John C. Miller, assignor to The Matthews & Willard Manufacturing Company, of Waterbury, Conn., and Patent No. 23,671 was granted to John C. Miller and Edward Schmitz, assignors to said The Matthews & Willard Manufacturing Company, the complainant herein.

The bills of complaint are in the usual and orderly form. They allege that the patentees were respectively the first and original inventors and producers of the designs in question; that Letters Patent for said designs were duly granted and issued, and were duly assigned to the complainant; that the designs were popular and the lamps embodying

them in great demand, and that they were, respectively, of great value to the complainant; that said designs were duly stamped with the word "Patented" in accordance with the provisions of the statute; that the public generally have acquiesced in and respected the rights of the complainant thereto, except the defendants, who. have, to the great damage of the complainant, infringed the Letters Patent by manufacturing, producing, and selling lamps embodying the several designs in question, and that, too, after notice had been given them of the alleged infringement.

The defendants have answered fully and have set up the following defenses: first, misjoinder of defendants; second, invalidity of the sev eral patents sued on by reason of want of jurisdiction of the Commissioner of Patents to grant the same; third, estoppel upon the complainant to sue the defendants for infringement of the several patents by reason of an implied license granted to the defendants under each of the said patents; fourth, that the complainant is not entitled to recover damages or profits from any of the defendants by reason of the complainant's failure to properly mark the patented articles made and sold by the complainant under said Letters Patent respectively; fifth, noninfringement.

On the

But one

So far as the third and fourth defenses are concerned it is sufficient to say that they are not justified by the evidence in the cause. contrary, the great weight of the testimony is against both. witnesss was produced by the defendants to prove a license. It is not necessary to analyze his statements in relation thereto. They are far from satisfactory. By his own admissions the implied license which he seeks to prove was wholly based upon a conversation with a sales agent of the complainant, who had no authority to license others to make the designs in question, and whose words, if they are correctly reported by this witness, convey not the slightest permission or grant of right to make such designs. Nothing occurred at the interview of which this witness testifies, accepting his statement as correct, which affords the least ground upon which to base an implied license to the defendants from the complainant to manufacture these patented designs. Besides, this witness is broadly contradicted by other witnesses who were pres ent at the interview and heard all the conversation between him and the sales agent, and, weighing these contradictory statements, it is not possible to sustain this defense. Nor can the defense fourthly above pleaded avail the defendants. The evidence is quite satisfactory that upon these designs was placed a label bearing the word "Patented," as required by the statute. The negative testimony of the one witness who declared that he

had handled a good many hundred dollars' worth of these goods (lamps) and had never seen one marked yet

cannot be permitted to outweigh the positive testimony of four witnesses to the effect that after the granting of the Letters Patent all designs protected thereby were duly stamped or labeled "Patented."

The fifth defense of non-infringement is practically abandoned. The proofs of infringement are so ample and satisfactory that the counsel for defendants in his brief is forced to admit

there is no question that the defendant, The Trenton Lamp Company, made and sold articles embodying the designs shown and claimed in each of the patents in suit. They were precisely similar in configuration and appearance.

And in this statement is tersely summed up the testimony.

Only two of the defendants can avail themselves of the first defense, and as to them it seems to be properly interposed. The bill charges Francis W. Rockhill and Barclay L. Stokes with infringement of the Letters Patent, and the same decree is prayed against them as against the principal defendant, The Trenton Lamp Company. The answers filed distinctly aver that Francis W. Rockhill was formerly secretary of the defendant corporation, but that he never was a stockholder nor a director therein, nor derived any profit from his connection therewith, excepting his regular stated salary, and that he had no direction or control whatsoever of its affairs, excepting as a subordinate officer, and no authority to concern himself with the making, using, or vending of the alleged infringing articles. The answers also show that the said defendant Barclay L. Stokes is and has been the treasurer of the said defendant company and is and has been a stockholder and director therein, but has at no time had any direction or control of the making, using, or vending of the alleged infringing articles, or any colorable imitation thereof, and had no knowledge whatsoever in the premises. The same benefit of this defense raised thus by the answers is prayed the same as if the same had been set up by plea. The testimony of the witness John W. Wilkes proves the statements contained in the answers in this behalf. These averments and this testimony are not impeached or controverted, and full credit must be given to them.

The principles of equity pleading require that all parties interested in the subject-matter or issue of the suit, and who must necessarily be affected by the decree, must be made parties thereto; but it is quite certain that neither of the defendants Rockhill or Stokes have a scintilla of interest in this controversy or its final outcome. They are simply employees of the defendant company, receiving in return for their services fixed salaries, in no wise dependent upon the sales of the infringing lamps. They do not appear to be interested in the infringement of which their employer has been guilty, nor have they person. ally been guilty of infringement themselves. Under such circumstances they cannot be held responsible in these actions. The safer rule to be applied in the making of officers, agents, and employees of a corpora tion parties defendant in a suit in equity to restrain infringement of Letters Patent is that every agent who performs acts of infringement and all stockholders, directors, and other officers who in the prosecu tion of the business of the defendant corporation authorize them are personally responsible to the patentee complainant. Otherwise they are neither necessary nor proper parties. It follows that as to these two defendants Rockhill and Stokes the bill must be dismissed.