Claude Neon Lights, Inc. v. Air Reduction Co.

Frankenthaler, J.

Defendant moves to dismiss the complaint on the ground that it raises a question of infringement of patents over which the Federal courts exercise exclusive jurisdiction. An. examination of that pleading reveals, however, that the theory of the action is not that defendant has been guilty of patent infringement. On the contrary, the complaint expressly recognizes that defendant is the lawful owner of the American, Mexican and Cuban patents relating to the extraction of rare gases from the air. Plaintiff alleges that defendant acquired these patents by assignment from L’Air Liquide under an agreement which recognized the exclusive rights of plaintiff’s assignor, Georges Claude, to the use of rare gases produced under the patents for illuminating purposes, and which, in effect, obligated defendant to refrain from selling them for illuminating purposes to any one other than Claude or his assignees. Plaintiff’s grievance, as asserted, is not that defendant manufactured the rare gases ■ — it had the undoubted right to do this under the patents transferred to it — but that the defendant sold the gases to persons who utilized them for illumination with knowledge on the part of the defendant that they were intended to be used for that purpose. There are allegations, it is true, that the purchasers, in employing the gases for illumination, adopted methods which infringed upon patents acquired by plaintiff through assignment from Claude, who in turn had obtained them from L’Air Liquide, and that defendant, in knowingly selling to these alleged infringers, aided and abetted the infringement of plaintiff’s patents. It' is manifest, however, on reading the complaint as a whole, that it is intended to state a cause of action for the sale by defendant of the rare gases of the air for illuminating purposes, in alleged violation of the latter’s agreement with L’Air Liquide, and that the infringement of plaintiff’s patents by the purchasers is only incidentally involved and a clearly collateral matter. Indeed, all reference to the patents owned by plaintiff could be omitted from the complaint without affecting the cause of action there asserted. Plaintiff nowhere complains that defendant has been infringing upon any of its (plaintiff’s) patents and nowhere questions the right of defendant to extract the gases in accordance with the patents owned by the defendant. It charges merely that defendant is violating its (defendant’s) contract with L’Air Liquide, in disposing of the gases for use in connection with illumination, and that an injunction should issue protecting its rights as beneficiary of said contract. The motion to dismiss for lack of jurisdiction must, therefore, be denied. Order signed.