588. The Supreme Court of Pennsylvania, May 25, 1936, ordered that: "Such portion of the decree of the court below as relates to the patentability of the devices invented by appellant prior to his employment by appellee or to the validity of patents issued thereon to appellant is vacated. The case is remanded for further hearing as to the measure of compensation to be awarded to appellant if the question of patentability is resolved in his favor at the termination of the proceedings in the federal courts. If, for any reason, there is a dismissal of the proceedings in the federal courts without an adjudication of this question, the court below may then consider the patentability of appellant's devices." The Court, in its opinion, stated that in the original bill, the validity of the patents involved was not challenged and that "The only issue presented was as to the respective property rights of the parties in the devices." The Court further stated: "Upon appeal, however, we pointed out that equity once having properly assumed jurisdiction should retain it to fully determine the whole controversy and do justice to all parties involved. This court therefore modified the decree of the lower court to reserve to appellant the right to compensation for such of the component parts of the completed device as were his property. This relief was not requested by appellant, but was deemed necessary to effect substantial justice."
13. Whatever title is held by the plaintiffs in the patent in suit, 1,890,421, is held by the plaintiffs as tenants in common.
14. Defendant did not have notice prior to the hearing in the Court of Common Pleas of Venango County, actual or constructive, of any limitation upon the power of Talbot to convey to defendant the right to use the structure or device relied upon by plaintiffs for infringement in this case.
Conclusions of Law.
I. The Supreme Court of Pennsylvania adjudicated as to Talbot; that defendant had the right to use the structure or device relied upon by plaintiffs for infringement in this case by virtue of the contract between Talbot and defendant.
II. Mann and Talbot are tenants in common of the patent in suit and the invention contained therein, if any.
III. The right conveyed to defendant by Talbot to use the structure or device relied upon for infringement, is binding upon Mann, a co-tenant of the patent in suit.
IV. Defendant has the right to use the structure or device relied upon for infringement as against both plaintiffs.
V. Defendant did not have notice, actual or constructive, or any limitation upon the power of Talbot, to convey to defendant the right to use the structure or device relied upon for infringement.
VI. Defendant is entitled to a decree that the bill be dismissed at plaintiffs' costs by virtue of the defenses averred in paragraphs A, B and C of the answer.
The material facts are stated in the foregoing findings of fact. This case is now before us on the special defenses made by defendant in paragraphs A, B and C of its answer. In these paragraphs, defendant avers that plaintiffs are estopped and barred from holding defendant as an infringer by virtue of the decree of the Supreme Court of Pennsylvania; that the infringements complained of are within defendant's contractual rights, as previously adjudicated; that defendant is assignee of all the right, title and interest of Talbot in any of the structures of which infringement is alleged and that the two plaintiffs are tenants in common of the patent in suit.
The structure or device relied upon by the plaintiffs for infringement is that which is set forth in Exhibit 19 in the suit in the Court of Common Pleas of Venango County, Pennsylvania.The Supreme Court of Pennsylvania decided that defendant, under its contract with Talbot, has the right to the use of said structure or device. Quaker State Oil Refining Company v. Talbot, Appellee, 315 Pa. 517, 174 A. 99; Quaker State Oil Refining Company v. Talbot, Appellee, 322 Pa. 155, 185 A. 586. Full faith and credit must be given to the judicial proceedings of a State Court when drawn in question in an independent proceeding in the Federal Courts. The principle of res adjudicata applies to questions of jurisdiction as well as to other issues. American Surety Co. v. Baldwin et al., 287 U.S. 156, 53 S. Ct. 98, 77 L.Ed 231, 86 A.L.R. 298; Grubb v. Public Utilities Commission, 281 U.S. 470, 50 S. Ct. 374, 74 L. Ed. 972; Fryberger v. Parker et al., 8 Cir., 28 F.2d 493; Commonwealth of Pennsylvania for use of William J. Kyle, Administrator, etc., v. United States Fidelity & Guaranty Company, 7315 Law, D.C., W.D.Pa. A district court of the United States cannot open or set aside its own judgment after the term in which it is entered, although the writ of scire facias or declaration shows that the entry of judgment was erroneous. Sun Indemnity Company et al. v. United States, 3 Cir., 91 F.2d 120. In the United States v. State of Texas, 162 U.S. 1, 16 S. Ct. 725, 40 L. Ed. 867, it is stated that, what was involved and determined in the former suit is to be tested by an examination of the record and proceedings therein, including the pleadings, the evidence submitted, the respective contentions of the parties and the findings and opinion of the court; there being no suggestion that this is a proper case for resorting to extrinsic evidence. The decree of the Supreme Court of Pennsylvania is binding on Talbot, one of the plaintiffs, who was a party therein.
Mann, plaintiff, became an owner of an undivided one-half interest in the patent in suit by virtue of the assignment made to him by Talbot September 24th, 1931. A tenant in common of a patent right may exercise his right thereunder to any extent he pleases without the consent of his co-tenant. He may make use of and sell specimens of the patented invention and may license others to do so; and neither he nor his licensees can be enjoined from a continuance in so doing. Walker on Patents, Deller's Ed. Vol. 2 p. 1450 Sec. 364; Central Brass & Stamping Co. v. Stuber, 7 Cir., 1915, 220 F. 909; Drake v. Hall, 7 Cir., 1914, 220 F. 905; McDuffee v. Hestonville, etc., Pass. R. Co., 3 Cir., 1908, 162 F. 36; Blackledge v. Weir, etc. Mfg. Co., 7 Cir., 1901, 108 F. 71; Pusey & Jones Co. v. Miller, C.C., 1894, 61 F. 401; Dunham v. Indianapolis, etc., R. Co., 2 Ban. & A. 327, Fed.Cas. No. 4,151; Whiting v. Graves, 3 Ban. & A. 222, Fed. Cas.No. 17,577; Kabbes v. Philip Carey Mfg. Co., 6 Cir., 63 F.2d 255; Clum v. Brewer, 1855, 2 Court. 506, Fed.Cas. No. 2909; Aspinwall Mfg. Co. v. Gill, C.C., 1887, 32 F. 697; Grier v. Baynes, C.C., 1892, 49 F. 363; Lalance & Grosjean Mfg. Co. v. National Enameling Co., C.C., S.D. N.Y., 1901, 108 F. 77, 78; and Huhn v. Strong Scott Mfg. Co. et al., 8 Cir., 265 F. 638; 48 C.J. 238, Sec. 365. There cannot be any recovery of profits or damages against any such licensee at the suit of any co-tenant of any such licensor. Dunham v. Railroad Co., 1876, 7 Biss. 223, Fed. Cas. No. 4,151.
The development and sale contract between the plaintiffs dated September 24, 1931, recognized the ownership of the plaintiffs as tenants in common of the patent in suit. This contract contained a provision that neither party could make a sale of his interest in the patent or patent application without the consent of the other party. This contract was recorded September 25, 1931. The defendant had no notice, either actual or constructive, that Talbot did not have a right to grant to defendant, the right to use the invention contained in said patent, if any. R.S. Section 4898, 35 U.S.C. § 47, 35 U.S.C.A. § 47, provides that: "Every patent or any interest therein shall be assignable in law by an instrument in writing, and the patentee of his assigns or legal representatives may in like manner grant and convey an exclusive right under his patent to the whole or any specified part of the United States. An assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent Office within three months from the date thereof or prior to such subsequent purchase or mortgage. * * *" The contract, aforesaid, was not a recordable instrument within the provisions of the applicable statute. The recording of such an instrument conveys no notice. Eastern Dynamite Co. v. Keystone Powder Mfg. Co., C.C., M.D.Pa., 164 F. 47, and cases therein cited. See also National Cash Register Co. v. New Columbus Watch Company et al. (National Cash Register Co. v. Hallwood Cash Register Company et al.) 6 Cir., 129 F. 114, 116. Defendant is entitled to the use of the structure or device shown on Exhibit 19 as against both plaintiffs, and therefore, cannot be held as an infringer in this case.
Let a decree be prepared in accordance with the foregoing findings of fact, conclusions of law and this opinion.
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