DENISON, Circuit Judge.
Infringement suit upon two patents for coin controlled mechanically played instrument, one issued September 19, 1916, on application filed July 10, 1909, No. 1,198,860, to Lesley and Enz (hereafter called Enz) and one issued September 19, 1916, on application filed December 16, 1910, No. 1,198,861, to Lesley and Sehoen (hereafter called Sehoen).
The District Court’s opinion held that Enz was invalid for lack of invention; that Sehoen was valid and infringed; that the defense of laches was not good; and that the title,to Sehoen had failed through the effeet of bankruptcy proceedings. The biff was therefore dismissed by a single entry, making no recitals; and the plaintiff appeals, assigning as error mainly that Enz should have been held good and infringed and that the plaintiff’s title to Sehoen should have been sustained.
On the argument here, defendant presents several of the defenses urged below; appellant insists we should consider only the questions which the District Court decided against it. This is not the rule. Appeals in equity bring up the whole case (with certain inferences in favor of the decree below), and the decree below should be sustained if it was right for any reason. Linde Co. v. Morse Co. (C. C. A. 2) 246 F. 834, 837. It follows that we must consider all those defenses which might be good as against the relief otherwise to be given.
The patents had special practical referlenee to automatic pianos, playing by electrical means and set in motion by a coin in the slot. In 1920, the owner brought suit upon these two patents, and another, against Wurlitzer, and in 1926 they were held valid and infringed. (D. C. Ill.) 10 F.(2d) 812. In the same year, 1926, tMs suit was brought.
It is plaintiff’s theory that the Enz patent is generic and the Sehoen patent specific, and that defendant by the same structures has infringed both. The Sehoen form is the one which plaintiff has marketed and wMch has had the commercial acceptance which was important in leading the court below to conclude that the Sehoen patent covered a real inventive advance and was valid — this conclusion being reached and announced before the objection to plaintiff’s title to this patent was made. The two patents would expire at the same date; it is not suggested that any one has infringed or is likely tó infringe Enz by any device which would not also infringe Sehoen; and, so far as we observé, the commercial effeet of an injunction and liability for profits and/or damages would be the same whether based upon one or upon both patents. The question whether Enz involves invention over the prior art is not easy of decision. It involves careful consideration of several conflicting questions, and the decision would have little or no value as a precedent upon other patents. Having reached the conclusion, hereinafter stated, that plaintiff is entitled to relief upon the Sehoen patent, the questions arising under Enz now seem to us practically aeademie; and we prefer to leave them undecided. To effectuate this result, the bill as to Enz should be dismissed without prejudice. ■
The District Judge overruled the defense of laches. We think he was right. The defendant and its predecessors had been manufacturing devices, probably infringing, since some time before the Sehoen patent was granted. Even if plaintiff’s assignors knew of this, there was surely no obligation upon them to give the defendants notice of infringement, before the patent issued. To do so would be to invite interferences and other contests. Notice of infringement was given in 1916, promptly upon issue, and during the next four years the infringement continued and no action was taken. \ There is sufficient evidence that during'most of this period the owners of the patents were financially unable to undertake the burden of patent litigation. Much of the period was also during the war, when such litigation was rightly discouraged. The patentees had given their notice, they
had not withdrawn it, and, during- that period, the defendants continued their infringement at their peril. In 19-20 further notices of infringement were served, and, as in the former instance, defendants paid no attention whatever. A suit, serving as a test, was promptly begun; and there is no complaint of any unreasonable delay in its prosecution. On the termination of that suit, this one was begun at once.
The right to an accounting of damages in equity is given by the statute in a permissive way. The court of equity will exercise its discretion in granting an accounting as well as in passing upon a preliminary injunction, and will consider all the respective equities of the parties. This is well settled; but for refusing an injunction' upon final hearing when the patent has still a substantial term to run, when the legal title to the monopoly and its infringement by defendant have been finally established and when there has been no misleading of defendant, akin to fraud, we find no precedent in the Supreme Court or in this court.
Some of the reasons which move a court of equity in passing, even finally, on equitable rights do not apply; the question is merely of an equitable remedy for a legal right. We have not been referred to or found any very satisfactory discussion of the problem; but it is sufficient for the purpose of this ease to say that the record does not show such laches as to justify even the denial of the usual accounting. The facts above recited sufficiently excuse whatever delay there was. Alliance Co. v. De Vilbiss Co. (C. C. A. 6) 41 F.(2d) 668, 670; Kittle v. Hall (D. C.) 29 F. 508.
Defendant does not point out any special injury to it coming from the delay and tending to operate as an estoppel, except that, in 1920, its manager died, leaving no one in the business who was familiar with the history of the art and might have known about or been able to find anticipation. When he received the notice of infringement in 1916, and again in 1920, he apparently did nothing to prepare or preserve any defense. We cannot regard this event as magnifying delay into estoppel.
The only remaining question as to patent validity rests in some belated depositions as to the Schoen escapement device, tending to show prior invention or two years’ prior use. Without considering the motion to strike out these depositions because taken without authority, the District Court held that they did not sufficiently establish either defense. We have reviewed the evidence and we agree with this conclusion. The proofs only attempt to carry the use back just beyond the critical two-year point, and certainty as to time is therefore particularly essential. The witnesses fixed the time with reference to certain events unrelated to this subject, and the time of these events is well enough established; but that the use in question occurred before these events is, after all, a matter of unconfirmed recollection. This use is also categorically denied by witnesses who should have known of it. The same comments apply generally to the proofs of prior invention; and, in addition, Lesley carries the invention by himself and Schoen far enough back to avoid the alleged priority in others. His testimony tends to show a sufficient reduction to practice, and a fair reason for suspending manufacture upon this form. It is as convincing as that on the other side. The criticisms made against it are fairly well met.
We come now to the ground upon which the court below based its dismissal of the case under the Schoen patent.
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DENISON, Circuit Judge.
Infringement suit upon two patents for coin controlled mechanically played instrument, one issued September 19, 1916, on application filed July 10, 1909, No. 1,198,860, to Lesley and Enz (hereafter called Enz) and one issued September 19, 1916, on application filed December 16, 1910, No. 1,198,861, to Lesley and Sehoen (hereafter called Sehoen).
The District Court’s opinion held that Enz was invalid for lack of invention; that Sehoen was valid and infringed; that the defense of laches was not good; and that the title,to Sehoen had failed through the effeet of bankruptcy proceedings. The biff was therefore dismissed by a single entry, making no recitals; and the plaintiff appeals, assigning as error mainly that Enz should have been held good and infringed and that the plaintiff’s title to Sehoen should have been sustained.
On the argument here, defendant presents several of the defenses urged below; appellant insists we should consider only the questions which the District Court decided against it. This is not the rule. Appeals in equity bring up the whole case (with certain inferences in favor of the decree below), and the decree below should be sustained if it was right for any reason. Linde Co. v. Morse Co. (C. C. A. 2) 246 F. 834, 837. It follows that we must consider all those defenses which might be good as against the relief otherwise to be given.
The patents had special practical referlenee to automatic pianos, playing by electrical means and set in motion by a coin in the slot. In 1920, the owner brought suit upon these two patents, and another, against Wurlitzer, and in 1926 they were held valid and infringed. (D. C. Ill.) 10 F.(2d) 812. In the same year, 1926, tMs suit was brought.
It is plaintiff’s theory that the Enz patent is generic and the Sehoen patent specific, and that defendant by the same structures has infringed both. The Sehoen form is the one which plaintiff has marketed and wMch has had the commercial acceptance which was important in leading the court below to conclude that the Sehoen patent covered a real inventive advance and was valid — this conclusion being reached and announced before the objection to plaintiff’s title to this patent was made. The two patents would expire at the same date; it is not suggested that any one has infringed or is likely tó infringe Enz by any device which would not also infringe Sehoen; and, so far as we observé, the commercial effeet of an injunction and liability for profits and/or damages would be the same whether based upon one or upon both patents. The question whether Enz involves invention over the prior art is not easy of decision. It involves careful consideration of several conflicting questions, and the decision would have little or no value as a precedent upon other patents. Having reached the conclusion, hereinafter stated, that plaintiff is entitled to relief upon the Sehoen patent, the questions arising under Enz now seem to us practically aeademie; and we prefer to leave them undecided. To effectuate this result, the bill as to Enz should be dismissed without prejudice. ■
The District Judge overruled the defense of laches. We think he was right. The defendant and its predecessors had been manufacturing devices, probably infringing, since some time before the Sehoen patent was granted. Even if plaintiff’s assignors knew of this, there was surely no obligation upon them to give the defendants notice of infringement, before the patent issued. To do so would be to invite interferences and other contests. Notice of infringement was given in 1916, promptly upon issue, and during the next four years the infringement continued and no action was taken. \ There is sufficient evidence that during'most of this period the owners of the patents were financially unable to undertake the burden of patent litigation. Much of the period was also during the war, when such litigation was rightly discouraged. The patentees had given their notice, they
had not withdrawn it, and, during- that period, the defendants continued their infringement at their peril. In 19-20 further notices of infringement were served, and, as in the former instance, defendants paid no attention whatever. A suit, serving as a test, was promptly begun; and there is no complaint of any unreasonable delay in its prosecution. On the termination of that suit, this one was begun at once.
The right to an accounting of damages in equity is given by the statute in a permissive way. The court of equity will exercise its discretion in granting an accounting as well as in passing upon a preliminary injunction, and will consider all the respective equities of the parties. This is well settled; but for refusing an injunction' upon final hearing when the patent has still a substantial term to run, when the legal title to the monopoly and its infringement by defendant have been finally established and when there has been no misleading of defendant, akin to fraud, we find no precedent in the Supreme Court or in this court.
Some of the reasons which move a court of equity in passing, even finally, on equitable rights do not apply; the question is merely of an equitable remedy for a legal right. We have not been referred to or found any very satisfactory discussion of the problem; but it is sufficient for the purpose of this ease to say that the record does not show such laches as to justify even the denial of the usual accounting. The facts above recited sufficiently excuse whatever delay there was. Alliance Co. v. De Vilbiss Co. (C. C. A. 6) 41 F.(2d) 668, 670; Kittle v. Hall (D. C.) 29 F. 508.
Defendant does not point out any special injury to it coming from the delay and tending to operate as an estoppel, except that, in 1920, its manager died, leaving no one in the business who was familiar with the history of the art and might have known about or been able to find anticipation. When he received the notice of infringement in 1916, and again in 1920, he apparently did nothing to prepare or preserve any defense. We cannot regard this event as magnifying delay into estoppel.
The only remaining question as to patent validity rests in some belated depositions as to the Schoen escapement device, tending to show prior invention or two years’ prior use. Without considering the motion to strike out these depositions because taken without authority, the District Court held that they did not sufficiently establish either defense. We have reviewed the evidence and we agree with this conclusion. The proofs only attempt to carry the use back just beyond the critical two-year point, and certainty as to time is therefore particularly essential. The witnesses fixed the time with reference to certain events unrelated to this subject, and the time of these events is well enough established; but that the use in question occurred before these events is, after all, a matter of unconfirmed recollection. This use is also categorically denied by witnesses who should have known of it. The same comments apply generally to the proofs of prior invention; and, in addition, Lesley carries the invention by himself and Schoen far enough back to avoid the alleged priority in others. His testimony tends to show a sufficient reduction to practice, and a fair reason for suspending manufacture upon this form. It is as convincing as that on the other side. The criticisms made against it are fairly well met.
We come now to the ground upon which the court below based its dismissal of the case under the Schoen patent. Schoen, December 16, 1910, became an applicant for this patent, jointly with Lesley, and the Patent Office records continued to show his joint interest until the patent was issued to them both, September 19, 1916. On April 14, 1915, Schoen was adjudged an involuntary bankrupt, and thereupon (the exact date is not shown) filed his schedule of personal property assets, in which under the heading “Patents, Copyrights and Trademarks, etc.,” he said “None.” He was discharged in bankruptcy within the first year. Nothing appears as to any action by the trustee or creditor during the ten years before this suit was commenced or during its three years’ pend-ency, indicating any claim against this patent as a bankruptcy asset. It is fairly to be assumed that the trustee was discharged many years ago. Lesley and Schoen -sold the patent to plaintiff while this suit was pending, and, in effect, showed this by supplemental biU.
The situation presents a number of interesting questions which do not seem to be clearly covered by any authoritative decision.
Is it necessary that the complainant in an equity suit for infringement have the
complete, perfect, and entire legal title, or may one joint owner (who owns, not the whole of a half, but a half of the whole) maintain the suit if it sufficiently appears that there is no outstanding title to the remaining interest which could subject defendant to the danger of a further recovery in law or in equity? Where there has been a transfer of a pending application, not recorded or capable of record, and the patent issues to the inventor assignor, does he take the legal title in trust for the earlier assignee, or does he take no title, legal or equitable? If he takes the legal title as trustee, or even only the apparent legal title, and sells to a good-faith purchaser (as we might assume happened in this case), does the latter title prevail over the earlier unrecorded assignment ?
To what extent do the present statutory provisions for recording assignments in-the Patent Office affect the character of the title or interest acquired by the assignee of the inventor patentee, as against the assignee by a pre-issue transfer? Prior to the 1926 amendment of section 70 of the Bankruptcy Act (tit. 11, USCA § 110), was the interest of an inventor in his invention, upon which he had made application for a patent, such “patent right” or “property” as passed by this section? See In re McDonnell (Shiras, D. J.) 101 F. 239; In re Dann (Seaman, D. J.) -129 F. 495; In re Myers-Wolf Co. (C. C. A. 3) 205 F. 289. These questions have received study, but we conclude they all may be passed by without decision, since we plaintiff, legal and equitable, is here suffithink that for another reason the title of the eient.
When property of the more ordinary type has been owned by a bankrupt, the complete title passes to the trustee, taking effect by relation upon the date of filing the bankruptcy petition, and it may well be assumed that a formal reconveyance by the trustee would be necessary to revest the title in the bankrupt. Some property, however, may carry such burdens that the trustee is not obliged to accept, but has an election to accept or reject, and the title does not pass to and vest to him in the same unconditional way. Where there is property of this character, it would seem that the title passes to the trustee upon condition subsequent. If he decides not to accept, the implied condition is broken and the title revests in the bankrupt —if indeed there has ever been more than a tender of the title. .In the event of such rejection, it is clear that no formal conveyance by the trustee to the bankrupt is required. Sessions v. Romadka, 145 U. S. 29, 39, 12 S. Ct. 799, 36 L. Ed. 609.
The interest of the inventor in an invention which is evidenced by pending application for a patent is very clearly of the class where the title which the trustee gets or may get, is burdened with such conditions that acceptance may be an injury rather than a benefit to the trust estate. Such application represents an inchoate and unproved right. It is practically a lawsuit brought by the inventor to persuade or compel the government to make a grant of a monopoly to which bethinks himself entitled. Any prosecution of the proceeding necessarily involves some expense, its proper prosecution a considerable expense, and that prosecution which may be and often is necessary, a very large expense, as well as months or years of delay. The patent to be received, judging by the average experience, may not be worth what it eosts to get it. Clearly, it is for the trustee to decide whether or not. he will take on this certain burden with its contingent benefit. If such
a patent application is scheduled, and thus (or, probably, in any other way) comes to the trustee’s knowledge, it is dear that, before the amendment of 1926, He had a reasonable time in which to elect. His distinct manifestation, even though wholly by parol, that he thought best not to accept is sufficient to terminate his right of acceptance and to re-vest the title in the bankrupt. Sessions v. Romadka, supra; Dushane v. Beall, 161 U. S. 513, 515, 16 S. Ct. 637, 40 L. Ed. 791; Bank v. Lasater, 196 U. S. 115, 119, 25 S. Ct. 206, 49 L. Ed. 408; Smith v. Gordon, 6 Law Rep. 313, Fed. Cas. No. 13052; Taylor v. Irwin (C. C. Iowa) 20 F. 615. While we find no controlling or persuasive precedent, it seems obvious that if, with this knowledge, he does nothing toward acceptance or prosecution, but permits the estate to be wound up and himself to be discharged as trustee, the reasonable time allowed him for election has expired, with the result that the title again rests in the bankrupt. Whether upon sufficient cause shown the estate could be reopened — lacking the intervention of a good-faith purchaser — and the title be taken over by a successor trustee, need not be considered.
This brings us to the question as to what happens when, as here, the patent application is not scheduled, and, by supposition, the trustee does not otherwise know about it, but in ignorance thereof proceeds, after a year or two, to wind up the estate and be discharged.
Upon the assumption that the title to this invention has been in him without his knowledge up until the closing of the estate, what becomes of it? It cannot remain in the trustee; he is dead. It is difficult to Conceive that it remains in the bankruptcy court, which has wiped this subject-matter off its books. The theory most favorable, as against complete ’ revestiture in the bankrupt, would seem to be that tbe failure to schedule or otherwise give notice to tbe trustee would extend tbe reasonable time witbin wbieb be or those entitled to do so might eleet whether tbe title should be taken over for tbe benefit of tbe bankrupt estate. If this right of election survives the trustee’s discharge, perhaps the creditors as a body may, within a reasonable time, demand the property and obtain it by reopening. Their reasonable time must, at the latest, start to run when they are chargeable with notice that the patent application existed at the time of bankruptcy. When the patent issues and becomes a public record, showing on its face that at the time of bankruptcy it was a pending application, the whole public, including these creditors, is chargeable with notice thereof; and if, within a reasonable time •after having such notice, no proceedings are taken to get control of the patent in the interest of the bankrupt’s creditors, the title must remain where it apparently is.
Whatever might be a reasonable time, thirteen years is too long; and if conceivably some otherwise sufficient excuse could be made for that delay, an intervening sale to a good-faith purchaser, who bought an apparently perfect title, would be an unanswerable objection. In ease of any substantial delay, after the public notice given by the issue of the patent to the inventor and after the bankrupt estate is wound up and the trustee discharged, the burden must be upon the claimant to show circumstances to justify a reopening of the estate and .to show the nonexpiration of a reasonable time to claim the invention for the benefit of the bankrupt’s creditors. The suggestion that there might be some possible outside interest is one which a court of equity ought not to accept from a mere trespasser for the sake of enabling the trespasser to avoid the results of his unlawful action.
The result of this opinion is that the decree below should be reversed, with instructions to enter the usual interlocutory decree for injunction and accounting upon the Sehoen patent, and, as to the Enz patent, to dismiss the bill without prejudice.