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Alcott v. Young.

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tages in use that are claimed for it. But, there is no patentable invention in accompanying the bundle with the kindler, by attachment or insertion. It might as well be claimed, that it was a patentable invention to tie a match to a cigar, or a straw for drinking to a drinking glass, or a fork to a can of food. The case is not unlike that of Langdon v. De Groot, (1 Paine, 203,) where the claim of the patent consisted in folding thread and cotton into skeins or hanks of a convenient quantity for retailing, with a sealed wrapper around the same, and a label containing the number and description of the article. The invention was held not to be patentable. In the present case, the purchaser of the Webber bundle gets a bundle of kindling wood and a fire-lighter. He gets no more than if he purchased the two separately. If he purchases a given number of plain bundles of kindling wood and an equal number of fire-lighters, and has them in his house to be used, one fire-lighter with one bundle of kindling wood, he would infringe this patent, if he should tie the former to the latter or insert the former in the latter. No such result can be admitted. The mere aggregation of the two things is not a patentable combination. Until the kindler is lighted there is no joint result consequent on the aggregation of the two. The lighting or combustion of the Webber kindler presents nothing new, in contrast with the lighting or combustion of a kindler which was never tied to or inserted in the bundle.

It does not appear that the question was distinctly considered in the case in Maryland. There are numerous cases in the Courts of the United States which show that there is not a sufficiency of invention in this case to support the patent. (Knight v. R. R. Co., Taney's Decisions, 106; Bean v. Smallwood, 2 Story, 408; Winans v. R. R. Co., Id., 412; Hotchkiss v. Greenwood, 11 How., 248; Phillips v. Page, 24 Id., 164; Jones v. Morehead, 1 Wall., 155; Stimpson v. Woodman, 10 Id., 117; Hicks v. Kelsey, 18 Id., 670; Hailes v. Van Wormer, 20 Id., 353; Rubber Tip Pencil Co. v. Howard, Id., 498; Smith v. Nichols, 21 Id., 112; Milligan & Higgins Glue Co. v. Upton, 6 Off. Gaz. of Pat. Off., 837;

Nelson v. McMann.

Brown v. Piper, i Otto, 38; Reckendorfer v. Faber, 2 Id., 347; Needham v. Washburn, 7 Off. Gaz. of Pat. Off., 649; Dunbar v. Myers, 4 Otto, 187; Mahn v. Harwood, 14 Off. Gaz. of Pat. Off., 859.) The English cases are to the same effect. (Brunton v. Hawkes, 4 B. & A., 541; Saunders v. Aston, 3 Barn. & Ad., 881; Losh v. Hague, Webst. P. C., 202; Kay v. Marshall, 8 Cl. & Fin., 245; Bush v. Fox, 5 H. of L. Cases, 707; Tetley v. Easton, 2 C. B., N. S., 706 ; Brooks v. Aston, 8 E. & B., 478; Envelope Co. v. Seymer, 5 C. B., N. S., 164; Ralston v. Smith, 9 Id., 117 and 11 Id., 471; Horton v. Mabon, 12 Id., 437; Orenson v. Clarke, 13 Id., 337 and 14 Id., 475 and 11 H. of L. Cases, 223; Harwood v. Railway Co., 11 Id., 654; Jordan v. Moore, L. R., 1 C. P., 624; Penn v. Bibby, L. R., 2 Ch. App., 126; Fox v. Dellestable, 15 W. R., 194; White v. Toms, 17 Law Times Rep., N. S., 348 ; Parkes v. Stevens, Law Rep., 8 Eq., 358 and 5 Ch. App., 36; Rushton v. Crawley, Law Rep., 10 Eq., 522.)

The motion for an injunction is denied.

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A mere licensee under a patent cannot sue, in equity, for the infringement of his rights under the patent, without joining with him, as plaintiff, the owner of the legal title, and such owner is, in such case, a proper party.

What constitutes a mere licensee, defined.

The instrument under which the plaintiff in this case claimed his rights, held to be only a license.

(Before BLATCHFORD, J., Southern District of New York, April 2d, 1879.)

Nelson v. McMann.

BLATCHFORD, J. The bill in this case is founded on reissued letters patent of the United States, granted to Nathaniel Jenkins, August 3d, 1869, for an "elastic packing for joints and valves exposed to destructive fluids." The original patent was granted to Jenkins, May 8th, 1866. The specification of the reissued patent describes the new packing as "an elastic packing, of indestructible properties, to a valve, joint or aperture through which a destructive fluid is to pass, such as steam of any kind, hot water, kerosene or other coal oil, hot or cold." The bill alleges, that Jenkins, by an instrument in writing, dated February 1st, 1870, assigned and conveyed to the plaintiff "the exclusive right and license, within the States of New York and New Jersey, to use said elastic packing in the manufacture of any and all manner of valves, cocks and other articles in which said elastic packing could or should be used, and sell for use in said territory and elsewhere in the United States, such valves, cocks, &c., so manufactured." It also alleges, that, under such rights, the plaintiff made and sold "valves, cocks and other articles containing said elastic packing." It also alleges, as an infringement, that the defendants did, in New York and New Jersey, "use and vend to others to be used the aforesaid invention and discovery, and did cause the same to be done, and did make, use, and vend to others to be used, valves, cocks and other articles employing and containing said improved elastic packing."

To this bill the defendants interpose a plea, which sets forth, "that the said Charles Nelson is not, and never has been, the assignee of the said letters patent in said bill set forth, or of

any territorial grant under the same, in manner and form as set forth in said bill, and that the said letters patent are now the exclusive property of Thomas William Clarke of Boston, in the county of Suffolk, and State of Massachusetts, under the following claim of title: The said Nathaniel Jenkins died, on or about the twentieth day of May, 1872, leaving a will duly probated in said county of Suffolk, in the probate Court thereof, whereof Charles F. Jenkins, Alfred W. Chandler and John Hassam were executors, and came into full

Nelson v. McMann.

possession of said letters patent. The said Charles Jenkins, Alfred W. Chandler and John Hassam, executors as aforesaid, on the day of— -, 1874, duly assigned said letters patent to Alfred B. Jenkins, under power contained in said will, and thereby conferred upon them. The said Alfred B. Jenkins, on the fifth day of November, 1874, duly assigned the same to said Thomas William Clarke. Wherefore defendants say, that the title to said letters patent is not in the said Charles Nelson, for the States of New York and New Jersey." The plaintiff takes issue on this plea, by a replication.

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Proofs have been taken by both parties, and the case has been brought to a hearing thereon. The real question tried and argued has been, whether the plaintiff has a right to maintain this suit in his own name alone, as it is now brought. The bill does not aver that the plaintiff is or has been the assignee of the patent or of any territorial grant under the same. Therefore, the plea, in denying that, denies what is not averred in the bill. The allegation of the bill as to the right and license conveyed to the plaintiff by Jenkins, by the instrument of February 1st, 1870, is not otherwise denied by the plea. The parties have, however, treated the pleadings and proofs as raising the question, whether the plaintiff has such a title to, or under, the patent as authorizes him to bring this suit in his own name alone; and that is the question. which will be considered.

On the 1st of February, 1870, Jenkins owned two other patents which had been granted to him, besides the reissued patent of 1869. That reissue will be called the 1869 patent. The 1869 patent was for a packing composed of refractory earth and vulcanized rubber. Of the other two patents, one, granted October 15th, 1867, was for a packing for joints and valves composed of pulverized mica and vulcanized rubber, or one composed of pulverized wood charcoal and vulcanized rubber. The other patent was granted October 6th, 1868, and was for an "improvement in steam globe valves," of that class in which an elastic or semi-elastic packing could be em

Nelson v. McMann.

ployed, the packing being in an annular chamber in the valve head. Premising this, the instrument of 1870 was made. It contains these provisions: "Whereas said Jenkins is the proprietor of certain inventions in the construction of stop valves, cocks, &c., and in packing or discs for stop valves, cocks and other purposes; and whereas the said Jenkins has entered into an arrangement with said Nelson to license him to manufacture stop valves, cocks, &c., under his patent dated October 6th, 1868, and also other valves, cocks, &c., of a suitable pattern to employ his said patent packing or discs, and said Nelson does agree to pay to said Jenkins certain royalties on the valves, cocks, &c., so made by him, and to conduct the manufacture and sale of said valves, cocks, &c., in a manner that will insure the best results to the parties herein. named: Now, therefore, said Jenkins does hereby authorize, empower and license the said Nelson to manufacture and sell valves, cocks, &c., of any and every kind, name and description, for any and every purpose, according to his said letters patent, dated October 6th, 1868, and does also authorize and empower said Nelson to make any and every other valves, cocks, &c., not constructed according to said letters patent, which can be suitably arranged for employing the Jenkins patent packing or discs, without making the said Jenkins liable for any infringements of letters patent on valves, cocks, &c., taken out by any other party or parties; and said Jenkins does hereby covenant and agree to and with said Nelson, that he will sell and promptly supply all his orders for the patent packing or discs, such as are to be used in the construction of the valves, cocks, &c., so made by him or for him, at a discount of twenty (20) per cent. from the latest list of prices of such packing or discs, advertised or circulated by him, a copy of which said list is hereunto annexed, in order to show the prices at this date;" (here follows the list of prices of packing or discs ;)" and the said Jenkins does also covenant and agree, to and with the said Nelson, that he will not hereafter grant any authority or license to any person or persons to manufacture, within the States of New York and

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