The opinion of the court was delivered by: KNIGHT
Plaintiff moves for leave to file an amended and supplemental complaint to include the Alien Property Custodian as a party plaintiff, with the recital of his vesting order relating to the patent in suit, and also to limit its charge of infringement to the field for substitutes for linseed oil and other types of drying oil.
The defendant opposes the plaintiff's aforesaid motion to dismiss the complaint and also file an amended answer. The defendant's motion to amend is unopposed.
I have carefully reviewed the papers submitted in these motions and the clear and extensive briefs of the respective counsel.
Many of the matters involved in these motions are within my knowledge from the consideration of an earlier motion in this suit.
I think the matters in controversy here can logically be decided in the order which follows:
Accepting the defendant's claim that the plaintiff's right to sue was not enlarged by the assignment of May 28, 1940, that prior to that date it had the right to sue only in the limited field of its license and then only by bringing in I.G. Farbenindustrie Aktiengesellschaft, a corporation of Germany (hereinafter called "I.G."), as an indispensable party plaintiff, the Alien Property Custodian, as successor in interest of I.G., is an indispensable party plaintiff.
The conclusion above made is based upon the assumption that the I.G. was the owner of the title to the property and had not parted with such ownership.
It is claimed by the defendant that the Standard Catalytic Company (formerly known as "S.I.G.", and hereinafter called "S.I.G.") is an indispensable party and is such by reason of the license issued by I.G. to it on November 9, 1929.
It is claimed that the field of the license so issued S.I.G. was in the field of the license issued to the plaintiff. The license issued to the plaintiff is described in the "field" defined as "the treatment of castor oil to produce oils of drying oil character, i.e., to the type suitable as substitutes for linseed oil and other types of drying oils."
The so-called Hutz & Joslin letter of June 19, 1940, which I conclude is a part of the assignment of May 28, 1940, expressly makes such assignment subject to the aforesaid license issued to S.I.G. It recites that such license to S.I.G. was "for the manufacture of products which are to be used in admixtures of products of mineral oil character."
The license itself to S.I.G. states that it is to cover the manufacture of such products. It seems to me that the license to S.I.G. Co. and to this plaintiff are for the manufacture, sale, etc., of two different processes, to wit: "one is for the process of the modification of castor oil to make it soluble or miscible with mineral oil and useable as a lubricant, and one to make a drying oil, such as might be used in the paint and varnish arts as a drier, as is linseed oil."
This is a conclusion which I arrived at and pointed out as quoted last above in my decision of August 26, 1941 (40 F.Supp. 357), in the consideration of this patent on the aforesaid prior motion. The first mentioned process was the one granted by the license issued to S.I.G.; the other one issued to this plaintiff. I think the plain language of the licenses make this distinction, and I think it is clear that the patentee so understood it. The claim now made by the plaintiff is definitely limited to the process of making a drying oil to be used, as is linseed oil, in the making of paints, varnishes and enamels.
It is the defendant's claim, in effect, that S.I.G. is an exclusive licensee in all fields under the patent suit based upon the agreement by I.G. with S.I.G. to assign to S.I.G. "all of its patent rights outside of Germany which relate wholly or principally to the hydrocarbon field" and also the right to license others "under its patent rights, which are useful in the hydrocarbon field but are also useful ...