
    BI-PRODUCTS RECOV. CO. v. MABEE
    U. S. Dist. Court, N. D. Ohio, W. D.
    No. 218.
    Decided Jan. 11, 1923
    1247. WAIVER — Objection to venue in Federal Court waived by answer to merits.
    677. JUDGMENT — -1. Res Judicata — Conclusiveness not affected by appeal which does not operate as supersedeas.
    2. Jurisdiction of subject matter essential.
    327. COURTS — 1. State Court has jurisdiction of suit to enforce contract for assignment of patent applications.
    2. Incidental injunctive relief does not deprive State Court of jurisdiction of suit to enforce contract for patents.
   PECK, D. J.

(Sitting by Designation)

Epitomized Opinion

Suit in equity against Mabee. The amended answer set up two defenses. First, there was no jurisdiction, and second, res judicata resulting from the proceeding in the State Court. The Company instituted an action in the State Court and in the Federal Court against Mabee on the same day alleging in both actions that Mabee had assigned certain patents to the company and had fraudulently made subsequent assignments to others. The prayer was for an injunction against the making or recording of further assignments and in setting aside the assigments which had been made subsequent to the company’s assignment.

The complaint in the Federal Court further alleged that Canadian patnets had also been assigned to the company. Service was first had in the State Court case in which Mabee was enjoined from assigning the inventions and order to assign the same to the company. Mabee appealed but his appeal did not vacate the' injunction. The prayer in the Federal case is for an injunction against further assignments and for an injunction against making, using or licensing the inventions covered by the Canadian patents, and for specific performance of the contract to assist in the procuring the development of Canadian patents.

Attorneys — Ritter & Hutchens, for ByProducts Recovery Co.; J. H. Boyd, for Mabee; all of Toledo.

On a hearing the bill was dismissed as to all matters except those dealing with the Canad'an patents and it was held:

1. That the objection that the defendant was an American citizen and an inhabitant of New York or Illinois and could only be sued in the state of his residence goes to venue and not to jurisdiction and this objection has been waived by answering to the merits.

2. The judgment in the State Court is at bar to a subsequent suit as to all matters within the jurisdiction of the State Court and therein determined. Notwithstanding an appeal which under the state statute does not supersede the judgment.

3. Want of jurisdiction of subject matter is, if true, a good reply to the plea of the bar of former judgment.

4. - The State Court had jurisdiction to enforce a contract establishing title to a patent as this does not involve any question of infringement of patent.

5. The State Court had jurisdiction to grant specific performance of a contract involving the title to a patent if it does not determine the question of infringement.

6. The prayer for an order directing Mabee to assist in the procuring of letters patent upon specified applications is too general as well as too vague to be made the subject for an order of specific performance.

7. The State Court has coxnpleted all issues presented except those relative to the Canadian patents aixd the b'll is dismissed as to all matters so concluded.  