William Howard Taft

“ Here, however, the patentee is the infringer, and, as he cannot sue himself, the licensee is powerless, so far as the courts of the United States are concerned, unless he can sue in his own name. A court of equity looks to substance rather than form. When it has jurisdiction of parties, it grants the appropriate relief, without regard to whether they come as plaintiff or defendant. In this case the person who should have protected the plaintiff against all infringements has become himself the infringer. He held the legal title to his patent in trust for his licensees. ”

“ If the owner of a patent, being within the jurisdiction, refuses or is unable to join an exclusive licensee as coplaintiff, the licensee may make him a party defendant by process, and he will be lined up by the court in the party character which he should assume. ”

“ In so doing, equity does no more than courts of law did, at one period in their history, as we have seen, in implying in the assignee of a chose in action a power of attorney to maintain an action in the name of the assignor in order to assure to the assignee the benefits of his assignment. ”

“ It is urged on behalf of the respondent that in equity the real party in interest, the exclusive licensee whose contract rights are being trespassed upon by the infringer, should be able without the presence of the owner of the patent to obtain an injunction and damages directly against the infringer. ”

“ We think the cases cited go beyond the defendant's interpretation of them, and do hold that, if there is no other way of securing justice to the exclusive licensee, the latter may make the owner without the jurisdiction a coplaintiff without his consent in the bill against the infringer. Equity will not suffer a wrong without a remedy. ”

“ The court held that it was an assignment under the statute, but further held that even if it were only an exclusive license, the suit might be maintained under the patent laws, because the patentee who had been privy to the alleged infringement had been made a party defendant with the infringer. This court said at page 223:
'A mere licensee cannot sue strangers who infringe. In such case redress is obtained through or in the name of the patentee or his assignee. ”

“ On March 16, 1917, the De Forest Company, by writing duly recorded, gave an exclusive license to make, use, and sell the devices for the life of the patents to the Western Electric Company, reserving to itself nonexclusive, nontransferable, and personal rights to make, use, and sell them for defined purposes. ”