the reach of process issuing out of any court in which the action could be brought and might be unwilling to appear voluntarily, has been obviated by the passage in 1927 of Act March 3, 1927, 44 Stat. 1394 (35 U.S.C.A. § 72a), under which suits are now pending between these parties in the Supreme Court of the District of Columbia."
So far as appears from the bill, the defendant-assignor has parted with all his interest with the result that he is at most a formal party, not even a party with a separable interest.
The plaintiff claims that the assignor is an indispensable party for the reason that his signature must be subscribed to the affidavits known as preliminary statements or if the assignee wishes to abandon or disclaim or concede priority the signature of the inventor must be affixed to the document.
Apart from the fact that it is by no means clear that the participation of the inventor is necessary for these purposes, it does not appear that he must be a party to the interference nor does the bill claim that the inventor wishes to abandon or disclaim or concede priority. Rule 5 of the Patent Office provides:
"The assignee of the entire interest of an invention is entitled to hold correspondence with the office to the exclusion of the inventor."
As said above, so far as appears from the allegations of the bill, the defendant-assignor has parted with his entire interest and will in no way be affected by the result of this suit. To hold that the plaintiff by making a mere formal party a codefendant can compel the real defendant, the real party in interest, to come from any part of the United States and defend his rights in the District of Columbia would conflict with the general purpose of Congress as appears from the fact that ordinarily suits in the federal courts must be brought in the district in which the defendant resides. Jud.Code, § 51, as amended, 28 U.S.C.A. § 112.
That an assignor is merely a formal party and not a real party in interest is also shown by the fact that this suit is brought by an assignee without the joinder of the assignor, a practice which is authorized by Equity Rule 13 of this court, which is taken from Equity Rule 37 promulgated by the Supreme Court (28 U.S.C.A. following section 723).
Plaintiff relies upon the case of Martindale et al. v. Robertson et al., Eq. No. 49174 In that case the defendants, assignor and assignee, were both residents of Massachusetts, and the other defendant was the Commissioner of Patents. As the defendants, assignor and assignee, were both residents of the same state, the question whether the joinder of the defendant-assignor would give this court jurisdiction was not involved.
I see no logical ground for holding a suit of this kind is a proceeding in rem. If it were, the amendment of March 3, 1927, 35 U.S.C.A. § 72a, would have been unnecessary and would have provided for a procedure more consonant with a proceeding in rem.
Plaintiff also claims that because the defendants have jointly moved to dismiss the bill for lack of jurisdiction, they have appeared generally, but this is without merit. Davidson Bros. Marble Co. v. Gibson, 213 U.S. 10, 29 S. Ct. 324, 53 L. Ed. 675; Georg Jensen Handmade Silver, Inc., v. Georg Jensens Slvsmedie A/S et al., 65 D.C.App. 17, 79 F.2d 142.
Inasmuch as in my opinion the words "without seeking other remedy" apply to "other remedy" sought in the same suit, it is unnecessary to consider the question whether the defense of former suit pending can be raised by a motion to dismiss, when the facts do not appear on the face of the bill, and in view of the opinion of the Supreme Court of the United States in Bernard Joseph Mumm v. Jacob E. Decker & Sons, 57 S. Ct. 675, 81 L. Ed. , decided April 26, 1937, it would not be necessary for the plaintiff to deny in the bill that it was not seeking other remedy, a bill in the "short form" being sufficient.
The motion to dismiss will be sustained.
© 1992-2004 VersusLaw Inc.