Supreme Court of the United States

Crown Die & Tool Company v. Nye Tool & Machine Works

February 19, 1923261 U.S. 24

Summary

The Court held that the suit arose under federal patent law, granting jurisdiction, and that an instrument conveying only the right to exclude others without the right to make, use, and vend does not constitute a valid patent assignment. Consequently, the assignee could not sue for past infringement damages without joining the patent owner, and the lower court’s dismissal was affirmed while the appellate reversal was reversed.

Holding

  • Whether the suit arises under federal patent law for jurisdictional purposes. The suit arises under the patent laws of the United States, conferring federal jurisdiction.
  • Whether a patent assignment that does not convey the right to make, use, and vend is a valid assignment of the patent. An instrument that conveys only the exclusive right to exclude, without the right to make, use, and vend, is not a valid assignment of a patent but a license.
  • Whether an assignee of such a limited right may sue for damages for past infringement. An assignee who does not receive the full patent monopoly cannot sue for damages for past infringement without joining the patent owner.
  • Whether equity Rule 37 can override the statutory requirements for standing in patent infringement actions. Equity Rule 37 does not supersede the statutory rule that only the patent owner (or a combined assignee of the patent and the claim) may sue for infringement damages.

Docket 240

Cited authorities

  • 29 Stat. 692
  • 5 Stat. 117

Cited by

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