
    STEWART-WARNER CORPORATION, Plaintiff, v. WESTINGHOUSE ELECTRIC CORPORATION, Defendant, and Canadian Westinghouse Company Ltd., Intervenor-Defendant.
    Civ. No. 9254.
    United States District Court W. D. New York.
    Feb. 16, 1965.
    See also D.C., 249 F.Supp. 975.
    Bean, Brooks, Buckley & Bean, Buffalo, N. Y., Augustus G. Douvas, Chicago, Ill. (Edwin T. Bean, Buffalo, N. Y., of counsel), for plaintiff.
    Jaeckle, Fleischmann, Kelly, Swart & Augspurger, Buffalo, N. Y., Ralph H. Swingle, Pittsburgh, Pa. (Charles K. Rice, Buffalo, N. Y., of counsel), for defendants.
   HENDERSON, District Judge.

On May 22,1964, the intervenor, Canadian Westinghouse, filed a motion to amend its answer to include a claim that Reissue Patent 25,581, issued by the Patent Office on May 19, 1964, was infringed by the plaintiff, Stewart-Warner Corporation.

Claiming that Frans Brouwer, formerly an employee of Canadian Westinghouse and presently an employee of Stewart-Warner, is a co-grantee and a co-owner of the reissue patent and, therefore, an indispensable party, the plaintiff moves to strike and dismiss the counterclaim. The defendants deny that Frans Brouwer has any such interest but, in the event the court should disagree, seek to have the portion of the action involved transferred to the Eastern Division of the Northern District of Illinois where Frans Brouwer may be joined in the action.

While employed at Canadian Westinghouse, John S. Cheverton and Frans Brouwer jointly made an invention covered by Cheverton and Brouwer Patent No. 2,933,612 filed in the United States Patent Office on January 7, 1958. On December 16, 1957, as required by their employment contracts, Cheverton and Brouwer had assigned their rights to the invention to Westinghouse. That assignment also was filed in the Patent Office on January 7, 1958. Subsequently, on October 24, 1960, Westinghouse’s rights under the assignment were assigned to Canadian Westinghouse.

Should a patentee believe that he has claimed less than he had a right to claim in his patent, section 251, Title 35 U.S.C. entitled “Reissue of Defective Patents” permits surrender of the original patent and reissue of the patent to embrace all disclosures of the original patent. The reissue patent covers the unexpired part of the term of the original patent.

Someone connected with one or the other of the defendants apparently believed that Patent No. 2,933,612 was defective in this sense and, accordingly, an application for reissue was prepared which contained a change in one claim and added another claim. However, when it was submitted to Brouwer he refused to sign it as joint inventor or to make the required oath with respect thereto.

Consequently, as permitted by Rule 47(a) of the Rules of Practice of the United States Patent Office and section 116, Title 35 U.S.C., Cheverton executed the reissue application for himself and on behalf of Brouwer. Thereafter, a number of additional claims were added by amendment.

On May 19, 1964, the Reissue Patent 25,581 issued to Canadian Westinghouse Company Ltd. Brouwer, disputing the facts alleged by Cheverton in his application, protested and filed a petition for correction. Noting its error in issuing the reissue patent to Canadian Westinghouse, the Patent Office on October 6, 1964, filed a certificate of correction changing the grant from Canadian Westinghouse to “John S. Cheverton subject to the same rights which Frans Brouwer would have had if he had been joined, their heirs or assigns * *

The issue, of course, is whether the circumstances surrounding the issuance of the reissue patent gave rise to an ownership interest in Brouwer which makes him an indispensable party to this suit.

The defendants, at page 20 of their main brief, indicate that the claims of the reissue patent which will be relied upon in this suit are identical to the claims appearing in the original patent. Accepting this as fact, the present issue is greatly simplified. No reason appears why rights under a reissue patent may not vary on the basis of the claims involved. Having considered the rule, statutes and assignments involved, the court holds the rights and ownership of Canadian Westinghouse in reissue claims identical to those appearing in the original patent are unimpaired by disputes relating to amended of added claims. See 35 U.S.C. § 252. The court expresses no opinion as to the necessity of joining Frans Brouwer in a suit involving amended or added claims.

The motion is denied. So ordered.  