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Keywords

equitymotionpatentcorporationmotion to dismiss

damagesequityappealpatentcorporationrespondent

Related Cases

Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24, 43 S.Ct. 254, 67 L.Ed. 516

Facts

Nye Tool & Machine Works, an Illinois corporation, filed a bill in equity against Crown Die & Tool Company, also an Illinois corporation, seeking to enjoin the infringement of a patent for a machine used in forming screw-thread cutting devices. The patent was originally issued to Wright & Hubbard and assigned to Reed Manufacturing Company. Nye Tool claimed to have acquired the rights to sue for infringement through an assignment from Reed Manufacturing Company, which included the right to exclude Crown Die from using the patented invention.

This was a bill in equity filed in the United States District Court for the Northern District of Illinois by the Nye Tool & Machine Works, a corporation of Illinois, having its place of business in Chicago, against the Crown Die & Tool Company, a corporation of the same state and doing business in the same city.

Issue

Whether Nye Tool & Machine Works had the legal standing to sue for patent infringement based on the assignment from Reed Manufacturing Company.

Rule

An assignment of a patent right must convey the entire interest in the patent, including the right to sue for past infringements. A mere assignment of the right to exclude a specific party from using the patent does not confer the right to sue for past infringements unless the assignee also holds the legal title to the patent at the time of infringement.

An assignment by a patentee of the right to exclude a particular party from making, using, or vending the patented article, with the right to recover damages for past or future infringements by such party, carried with it no part of the title to the patent or interest therein, and conferred no right on the assignee to sue for past infringement.

Analysis

The court analyzed the nature of the assignment from Reed Manufacturing Company to Nye Tool & Machine Works, determining that it did not transfer the full legal title to the patent. As a result, Nye Tool lacked the standing to sue for past infringements because it did not hold the necessary rights under the patent law, which requires the patent owner or their assignee to be the party bringing the suit.

The error in the position of the respondent and the court below is in a failure to distinguish between the property or title or interest in a patent capable of assignment and the chief incident of that property, title or interest, an incident which can only pass by assignment when attached to the right to make, use and vend.

Conclusion

The court concluded that the assignment did not confer the right to sue for past infringements, and therefore, the motion to dismiss Nye Tool's complaint should have been granted.

The decree of the Circuit Court of Appeals is reversed, and that of the District Court is affirmed.

Who won?

Crown Die & Tool Company prevailed in this case as the court affirmed the dismissal of Nye Tool & Machine Works' complaint. The court found that Nye Tool did not possess the necessary legal rights to sue for patent infringement, as the assignment from Reed Manufacturing Company did not transfer the full interest in the patent. This ruling emphasized the importance of holding the legal title to the patent in order to maintain a suit for infringement.

Crown Die & Tool Company prevailed in this case as the court affirmed the dismissal of Nye Tool & Machine Works' complaint.

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