Summerhays v. Scheu

PULLEN, P. J.

This appeal is from a judgment of dismissal following the sustaining of a demurrer to an amended complaint without leave to amend, and the denial of a motion to file a proposed second amended complaint.

The first amended complaint attempted to state a cause of action for equitable relief restraining defendants from manufacturing and selling orchard heaters which embodied inventions described and claimed in several applications for patents which were sold by defendant W. S. Scheu to plaintiff, and for an accounting for all of the profits derived from the sale of the heaters embodying said inventions.

The amended complaint alleges in brief the purchase by plaintiff from defendant W. C. Scheu, by an instrument in writing, of all patent applications pending owned by defendant Scheu, the consideration therefor and performance by plaintiff. It is then alleged that defendants have, for several months prior to the filing of the complaint, without the consent of plaintiff, been manufacturing and selling the heaters described and claimed in the various applications for letters patent. Upon the sustaining of the demurrer plaintiff submitted a proposed second amended complaint, which in addition to the matters contained in the first amended complaint alleged that plaintiff was induced to purchase the business of W. C. Scheu, including the various applications for patents and inventions upon the representation of Scheu that he desired to retire from the orchard heater business, and that he would give plaintiff his advice and assistance in the business for a period of four years, and orally agreed that he would never again enter into the orchard heater business at any place, especially in California.

It is the first contention of plaintiff that W. C. Scheu, having assigned the applications for patent, may not thereafter use the features covered by the applications during the period fixed in the agreement of sale. To sustain such right of action, however, it must be predicated either upon the fact or

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ownership of the invention in appellant, or by virtue of a contractual relationship between the parties.

Counsel apparently agree that if a patent had been issued under the patent laws of the United States the exclusive jurisdiction as to infringements would vest solely in the United States courts. We are dealing here, however, with inventions before issuance of patent. Under the common law, which has not been changed by statute, an inventor has a natural but not an exclusive right to use and sell his invention independent of any rights conferred by the issuance of a patent. The only effect of a patent is to confer upon the patentee the right to exclude others from the use thereof.