37 assignment still executory,36 or by an assignee, such as a pledgee, whose assignor has an equitable interest in the property; 87 when it is the safer practice to join, as plaintiff 38 or defendant,39 the assignor, licensor, or mortgagee, as the case may be. The exclusive licensee of a patent for a specified territory has the implied selling' patented articles, and not expressly authorizing their use, because, though this might carry by implication the right to use articles made under the patent by the licensee, it certainly would not authorize him to use such articles made by others. Hayard v. Andrews, 106 U. S. 672, 27 L. ed. 271. See also Oliver v. Rumford Chem ical Works, 109 U. S. 75, 27 L. ed. 862." It has been held: that an allegation that a patentee assigned to complainant the exclusive right to make, use, and sell for use within the United States and its territories and foreign possessions, "in connection with wireless telephone work and wireless telephonic communication only, apparatus and equipment embodying said methods and apparatus under the patents hereinabove mentioned, or any other patent or patents now or hereafter owned or controlled" by the assignor or his assignee, did not show a conveyance to the assignee of the entire monopoly granted by the government to the patentee, but a mere license; and hence the assignee had no capacity to sue in his own name to restrain infringers. De Forest V. Collins Wireless Telephone Co., 174 Fed. 821. A patent-right is incorporeal property, not susceptible of actual delivery or possession; and the recording of a mortgage thereof in the Patent Office, in accordance with the act of Congress, is equivalent to a delivery of possession, * * * and makes the title of the mortgagee complete towards all other persons, as well as against the mortgagor. The necessary conclusion appears to us to be that Shipman, being the present owner of the whole title in the patent under a mortgage duly executed and recorded, was the person, and the only person, entitled to maintain such a bill as this, and that the plea, therefore, was rightly adjudged good." An agreement pending an application to assign any patent which may be" granted was held to transfer the legal and equitable title to the patent when issued. Individual Drinking Cup Co. v. Osmun-Cook Co., 220 Fed. 335; Southern Textile Machinery Co. v. Fay Stocking Co., 243 Fed. 917. An applicant for a patent cannot sue for an injunction against an infringement before the patent is issued to him. Standard Scale & Foundry Co. v. McDonald, 127 Fed. 709. 35 Waterman v. Mackenzie, 138 U. S. 252, 34 L. ed. 923. 36 Land Co. of New Mexico v. Elkins, 20 Fed. 545. 37 Hubbard v. Manhattan Trust Co., C. C. A., 87 Fed. 51, 57; Western Nat. Bank v. Armstrong, 152 U. S. 346, 38 L. ed. 470; Ackerson v. Long Branch & L. Co., 28 N. J. Eq. 542; Comptograph Co. v. Universal Accountant Mach. Co., 142 Fed. 539. Contra, Walker on Patents, $ 400. 38 Gaumont v. Hatch, 208 Fed. 378. authority, even against the will of the owner, to join him as a co-complainant in a bill to enjoin an infringement.39 The patentee and his exclusive licensee may join in a suit to enjoin the infringement of a patent,40 but the patentee and a licensee whose license is not exclusive cannot.41 Such a licensee is ordinarily not a proper party plaintiff.42 Where the bill alleges, that the licensee has an interest in the inventions which is capable of being impaired by the infringement, the licensee may properly be joined as a complainant.43 A former licensee cannot join as a co-plaintiff, unless all subsequent licensees and assignees of the license are also joined. An exclusive licensee need not ordinarily be joined as complainant with the patentee.45 When the patentee sues alone, he cannot recover profits which, but for the infringement, would have enured to the sole benefit of the 39 Libbey Glass Co. v. McKee Co., 216 Fed. 172; Brush-Swan El. Co. v. Thomson-Houston El. Co., 48 Fed. 224; Brush El. Co. v. El. Imp. Co., 49 Fed. 73; Brush El. Co. v. California El. L. Co., C. C. A., 52 Fed. 945; Excelsior W. P. Co. v. Allen, C. C. A., 104 Fed. 553; Havens v. W. R. Ostrander & Co., 190 Fed. 199. It was held in Van Orden v. Nashville, 67 Fed. 331, that the part owner of a patent cannot sue at law for damages caused by an infringement without joining his fellow owners as co-plaintiffs, and that he cannot make them defendants when they refuse to sue. Where, in consideration of the assignment of applications, the assignee agreed to prosecute them and also proposed interference proceedings between them and a patent issued to a stranger, together with an infringement suit against the latter in case patents issued; it was held that the assignor was not liable to reimburse the assignee for expenses paid in such prosecution, although the issue of the patents was refused because the assignor Fed. Prac. Vol, I-44 refused so to amend his application as to cancel rejected claims. Strauss v. Dilg, 140 App. Div. (N. Y. 424. For a case where a licensor was joined as a defendant, see Libbey Glass Co. v. McKee Glass Co., 216 Fed. 172. 40 Ibid., Havens v. W. R. Ostrander & Co., 190 Fed. 199. 41 Blair v. Lippincott Gl. Co., 52 Fed. 226. 42 Ibid. But see Wayman Vi Louis Lipp Co., 222 Fed. 679, and cases cited supra in note. 43 Daimler Mfg. Co. v. Conklin, 145 Fed. 955. 44 Victor Talking Machine Co. v. Am. Graphophone Co., 118 Fed. 50. 45 U. S. of S. & S. Co. v. Johnson R. R. Signal Co., 52 Fed. 857; Gayler v. Wilder, 10 How. 477, 13 L. ed. 504. "In the case of Waterman v. MacKenzie, 138 U. S. 252, 34 L. ed. 923, 11 Supr. Ct. R. 334, the Supreme Court held that a licensee might sue in his own name when it was necessary to prevent an absolute failure of justice. This is the effect, I take it, of the language of the court there used." licensee.46 The assignee of the whole of a patent, so far as a particular territory is concerned, need not be made a party to a suit by the assignor to enjoin infringements elsewhere.47 It has been held that an inventor, who has assigned his application, may maintain a suit in his own name to compel the issue of the patent.48 It has been held that any party against whom an order fixing rates is made by the Interstate Commerce Commission, may apply to the proper court for relief without joining other parties to the order, since the injury was said to be several and not joint.49 It has been held at circuit that a tax collector is not a proper party to a bill to set aside a conveyance made by him.50 And, as has been said before, no persons should be joined as plaintiffs,51 or defendants,52 who claim the property in question under inconsistent titles. For example, a mortgagee cannot maintain a bill against the mortgagor for a foreclosure, which at the same time seeks to enjoin a claimant adverse to both mortgagor, and mortgagee from asserting his title to the mortgaged property.53 An interest in the question of law involved is not sufficient to make a person a necessary or even a proper party,54 except when a bill of peace is filed. The equity rules, following the English Orders in Chancery, also provide that "in all cases in which the plaintiff has a joint and several demand against several persons, either as principals or sureties, it shall not be necessary to bring before the court as parties to a suit concerning such demand all the persons liable thereto; but the plaintiff may proceed against one Knowles, D. J., in Brush El. Co. v. California E. L. Co., C. C. A., 52 Fed. 945, 961. 46 Bredin v. Solmson, 145 Fed. 944. 47 Canton S. R. Co. v. Kanneberg, 51 Fed. 599, 600. 48 Wende v. Horine, 191 Fed. 620. Contra, Smith v. Thompson, 177 Fed. 721. 49 Atlantic Coast Line R. Co. v. Interstate Commerce Commission, 194 Fed. 449. 50 West v. Duncan, 42 Fed. 430. 51 Marquis Cholmondeley v. Lord Clinton, 2 Jac. & W. 1, at p. 135. Saumarez v. Saumarez, 4 M. & C. 331, 336. See Parsons v. Lyman, 4 Blatchf. C. C. 432; infra, § 140. 52 Dial v. Reynolds, 96 U. S. 340, 24 L. ed. 644; infra, § 141. 53 Ibid. But see Hefner v. Northwestern Life Ins. Co., 123 U. S. 747, 31 L. ed. 309. 54 Valette v. Whitewater Valley Canal Co., 4 McLean, 192. or more of the persons severally liable." 55 This rule, however, only applies when the demand is both joint and several, not when it is merely joint; 56 and when one of two or more jointly and severally indebted is the principal debtor, to whom the others are sureties, he must, it seems, always be joined in a bill filed by the creditor to enforce a security against either of the latter.57 Concerning the chancery order from which the rule was copied, Vice-Chancellor Shadwell said that it "applied to cases where several persons were liable in different characters, -that is, some as principals and the rest as sureties; and then it was sufficient to make one individual of each class a party; but where there was only one principal and one surety, both of them must be made parties." 58 Where an administrator had fraudulently obtained a decree of distribution in favor of those not entitled thereto, his sureties were held to be proper parties to a suit to hold him and the other distributees as constructive trustees for the next of kin.59 § 113. Cases where the law has furnished a representative. On account of the inconvenience which would be caused if the general rule were enforced in all cases, there are several classes of exceptions to it. The first of these exists when the law has furnished a representative of the interest in question. In such a case, those whom he represents are not usually necessary parties to the suit.2 The equity rules now provide: "Every action shall be prosecuted in the name of the real party in interest, but an executor, administrator, guardian, trustee of an express trust, a party with whom or in whose name a contract has been made for the benefit of another, or a party expressly authorized by statute, 55 Eq. Rule 42; copied from Rule 56, of 1842, which was copied from the 32d Order in Chancery of August, 1841. David v. McRae, 183 Fed. 812. 56 Pierson v. Robinson, 3 Swanst. 139, n. 57 Robertson v. Carson, 19 Wall. 94, 22 L. ed. 178; Wilson v. City Bank, 3 Sumn. 423; Allen v. Houlden, 6 Beav. 148; Pinkus v. Peters, 5 Beav. 253. 58 Lloyd v. Smith, 13 Sim. 457, 458, 459. 59 Diamond v. Connolly, C. C. A., 251 Fed. 234. § 113. 1 Wallworth v. Holt, 4 M. & C. 619; Powell v. Wright, 7 Beav. 449. 2 Calvert on Parties (2d ed.), 22. See Hopkins v. Page, 2 Brock. 20, 42. may sue in his own name without joining with him the party for whose benefit the action is brought." 3 7 9 Thus, until they have distributed the decedent's estate, executors and administrators are deemed sufficiently to represent all legatees, creditors, and next of kin in suits brought by or against them in their representative capacity,5 except when they are made defendants to a suit by a residuary legatee for his share of the estate, or when the rights of the legatees or next of kin between one another are in question, or in a suit to obtain a construction of the will; or where they are sued for collusion with a legatee who should then be made party; or, perhaps, when an executor or administrator is charged with a breach of trust and an accounting is required; but the executors do not represent the heirs at law in a suit affecting the real estate,10 and the devisees were held to be indispensable parties to a suit to foreclose a mortgage made by an executor.11 It has been held that where a suit is brought to determine the ownership of a fund in the hands of the trustee of an intestate, an administrator of the decedent's estate must first be appointed, and it is error to decree that the fund be paid "to such person as may hereafter be appointed administrator." 12 So a bankrupt or insolvent debtor 13 and his creditors are not 3 Eq. Rule, 37. 4 Carey v. Roosevelt, 81 Fed. 608. 5 Brown v. Dowthwaite, 1 Madd. 448; Potter v. Gardner, 12 Wheat. 499, 6 L. ed. 706; Burton v. Smith, 4 Wash. C. C. 522; Dandridge v. Washington's Ex'rs, 2 Pet. 370, 377, 7 L. ed. 454, 457; Wainwright v. Waterman, 1 Ves. Jr. 313; Anon., 12 Mod. 522; Glover v. Patten, 165 U. S. 394, 41 L. ed. 760. 6 Atwood v. Hawkins, Rep. temp. Finch, 113; Faithful v. Hunt, 3 Anst. 751; Calvert on Parties (24) ed.), 206, 208. But see McArthur v. Scott, 113 U. S. 340, 345, 28 L. ed. 1015; Martin v. Fort, 83 Fed. 19. 7 Kendall v. Hardenberg, 94 Fed. 911; Stevens v. Smith, C. C. A., 126 Fed. 706. 14 10 Wooslin v. Cooper (N. J. Ch., 1897), 36 Atl. 281. See § 119, infra. But see Alger v. Anderson, 78 Fed. 729, 733. 11 Detweiler v. Holderbaum, 42 Fed. 337. 12 Read v. Bennett (N. J. Errors & Appeals, 1897), 37 Atl. 75; infra, $126. 13 De Wolf v. Johnson, 10 Wheat. 367, 384, 6 L. ed. 343, 347; Van Reimsdyk v. Kane, 1 Gall. 371; Calvert on Parties (2d ed.), 24. 14 Spragg v. Binkes, 5 Ves. 587. |