(after stating the facts as above).
Appellant challenges the decree in tote. It denies liability for infringement on several grounds; one of them being that upon the findings of fact made by the court, its manufacture of the infringing products prior to the commencement of the suit was under and hy virtue of the exclusive license which appellee had granted to it. It contends that it fully and properly accounted for all royalties due under said license contract, and it denies the facts upon whieh it is ordered to turn over its interest in the second patent to appellee.
The complaint was filed on February 24, 1930. On May 4, 1932, one Ozouf (defendant in court below who did not appeal) was made a party to the action, and the bill was amended alleging the grant of the patent, No. 1,828,968, to Hiller and Ozouf, and prayed for an assignment by appellant of its interest therein to appellee.
At the conclusion of the trial the bill was, over appellant’s objection, amended to conform to tbe proofs adduced at the trial.
Prior to March 4, 1925, Stanley Hiller invented and his company, the appellee, had constructed a high-pressure press for extracting the oils and juices from animals and fish. On that date the appellant was in the business of making and selling packing house machinery and entered into a written contract with appellee wherein it acquired the exclusive right, for a period of ten years from the date of the agreement, to manufacture and sell high-pressure presses in accordance with the inventions of the two Hiller applications for patents that were then pending and which later matured into patents No. 1,700,407, granted January 29, 1929, and No. 1,739,459, granted December 10, 1929. By the terms of the contract appellant agreed to begin promptly after the signing of the contract and to continue through the life of the agreement to manufacture and sell the presses and to pay appellee for the said exclusive license, one-half of the selling price of presses it manufactured and sold, after first deducting the manufacturing costs.
Before trial appellee withdrew the allegation in its bill charging appellant with in-i fringement of patent No. 1,739,459. j
Immediately after the contract was signed appellee furnished appellant, All-bright-Nell Company, with the patterns, dies, drawings, blueprints, and other data pertaining to the press, and some time thereafter Stanley Hiller, president of appellee, came to Chicago and aided appellant in getting the press ready for market. Appellant manufactured and sold presses under said contract and on May 28, 1928, notified appellee in writing that it would discontinue the manufacture and sale of the presses under the agreement of March 4, 1925; that it considered the agreement terminated except for settlement of the account with respect to the presses manufactured and sold prior to May 28, 1928. Appellee refused to acknowledge the alleged right of said appellant to terminate the agreement and continued to treat it as in full force and effect to the time of the commencement of this action.
After May 28, 1928, appellant manufactured and sold presses similar to those manufactured under the contract, and marketed them under the name of “Aneo.”
The trial court found that the contract was valid, and that hy its terms it was to be in force for a term of ten years, with no provision for earlier termination; that it was in force at the time the hill of complaint was filed; that appellant manufactured and sold presses under the license it acquired, hut made no payments to appellee under the contract. These findings are supported by tbe evidence.
The District Court made other findings relative to the validity of the patents and their infringement. We deem it unnecessary to consider them, as we find that the rights of the parties to this action are controlled by tbe terms of tbe contract which was not terminated until the commencement of this action on February 24, 1930, thus eliminating the issue of patent infringements.'
Until appellee acquiesced in or consented to appellant’s attempt to repudiate the contract, appellant had the right to withdraw its proposed repudiation thereof, and appellee did not contract with any other person *394 for the manufacture or sale of the presses after May 28, 1928.
Appellant assigns as error the order of the District Court permitting appellee to amend its bill at the conclusion of the trial to conform to the proofs adduced at the trial. The amendment in part was as follows: “That plaintiff did not agree to a termination of said contract prior to the filing of this bill of complaint by which action plaintiff accepts said notice of termination.” The amendment also substituted the word “royalties” for the word “profits.” The proof clearly established the fact that appellee did not acquiesce in or consent to the termination of the contract until it filed its bill on February 24, 1930. ’
amendment was therefore properly aüowed by the District Court No claim of surprise was or could be made by appellant. The amendment did not set up a new cause of action. It simply fixed the true date of the termination of the contract as dis^ closed by the evidence and made the bill eon-form to the proofs The original bill was based upon the contract. The bill as amended is based upon the same contract and asks for the same relief, exeept that by the amendment the bill now alleges that the contract was not effectively terminated until the filmg of the bill. It was plainly the court’s duty to permit the filing of the amendment. Maryland Casualty Company v. Gerlaske (C. C. A.)
Inasmuch as the amendment was properly allowed, it is unnecessary for us to eonsider the validity of the patents or the alleged infringements thereof, and we express no opinion in regard to either issue. Appellant had a right to manufacture and sell its presses under the agreement up to the time the aetion was commenced, with the duty to account to appellee pursuant to the terms of the agreement.
Appellant also assigns as error that part of the decree directing the assignment of the interest of appellant in patent No. 1,828,-968, obtained on October 27, 1931, under the joint application of Hiller and Ozouf. The contract contained the following conditions: “All improvements and changes in designs, in the apparatus, machinery or equipments herein dealt with, whether patented or not, shall belong to .First Party (Appellee).”
The District Court found that Ozouf, while employed by the Allbright-Nell Comkad m/de ““J eaeh ' whmh he had assigned to it; that he had ?T°rked on +tke ^vemente of th® P*f+ embodled H+dleJ £™bonj! referred to m the conteact; that Hiller and 0z^had ff* n $ P8*8^ fanted 35 No' 1^28 968; that Ozouf exf ut+ed an assignment of his interest m the Patent and dflCT®d ^ tbe Allbright-NeH ^0mPanyj that it either destroyed or refused to dehver to aPPellee‘
It appears that Ozouf was appellant’s chief engineer, and, in the course of his em-Payment without compensation other than his salary, he made a number of inventions, all of which he voluntarily assigned to his employer, ineluding the Hiller-Ozouf patent, Tbe assignments were made ptlxsUant to his eontraet q£ employluent ^ appenant. In Standard Parts Co. v.
Peck,
pbe eordrae-¡; aiso contained the following gtipillatioll: «It is » * * agreed that tbe selling priee £or all slleb machinery, * * * gbaU be flxed by mutual agreement by the parties * * * but in the event of any sucb agreement not being reached, such sa^-e price shall be not less^ than twice the actual cost of such articles " * * and the fixing of such prices, if by agreement, shall be in writing. * * * ”
After the contract was signed the parties communicated by letter relative to the manufacture and marketing of the presses, There was some reference in the eorrespondence to the sale priee of the presses, but we are satisfied that the correspondence never *395 ripened into an agreement which changed the original contract.
The decree of the District Court in so far as it directs recovery of damages, if any, under the contract from the Allbright-Nell Company that appellee may have suffered as a result of the breach of said contract, and in so far as it orders a reference and an accounting to determine said damages, and in so far as it directs the execution of the assignment to appellee of appellant’s interest in patent No. 1,828,968, is affirmed. That part of the decree which holds the patents valid and infringed and directs an accounting of profits for their infringement by appellant is reversed. Each party to this appeal will pay one-half of the costs of the appeal.