30 F. 225 | U.S. Circuit Court for the District of Northern New York | 1887
The plea of the defendants goes to the whole bill. The complainant has taken issue upon the plea, and the case is now here upon the proofs. The only inquiry is whether the proofs establish the facts alleged in the bill. If they do, the defendants are entitled to judgment upon the jilea, even though, had the plea been sot down for argument, the facts averred would not authorize a judgment. Having taken issue upon the plea, the complainant cannot now assert that the facts alleged are not a good defense to the bill. Story, Eq. Pl. 697; Rhode Island v. Massachusetts, 14 Pet. 210; Myers v. Dorr, 13 Blalchf. 22; Bogardus v. Trinity Church, 4 Paige, 178; Birdseye v. Heilner, 26 Fed. Rep. 147. Equity rule 33, promulgated by the supremo court in 1842, declares that if upon an issue the facts stated in the plea, be determined for the defendant they shall “avail him as far as in law and in equity they ought to avail him.” It may be that this rule was intended to relieve a complainant from the hardship of having his suit barred when the facts stated are determined in favor of defendant, although they would not be a defense. But the language is consistent with the meaning that if the plea extends to part only of the matters of the bill the suit is to bo barred so far as the plea extends; and if this is the correct interpretation, the rule does not change the pre-existing practice. The effect of rule 33 has not been considered by the supreme court in any reported caso; and until that court passes upon the question, this court should adhere to the decisions in Myers v. Dorr and Birdseye v. Heilner.
“It is also agreed by botli parties to this agreement that neither will license to others the use of any of those patents to be used in the same territory in common with the other, but may license to their successors in business for a portion or all the territory, but with the same restrictions. The adjustment of this agreement, as to the forms to be entered upon the court records, shall be referred to the attorneys of both parties conjointly.”
The issues of fact to which the proofs are addressed are — First, whether the instrument of August 26, 1882, was executed by Mast, Foos & Co. with the sanction and approval of the complainant; and, secondly, whether this instrument was intended by the parties to- be a final agreement in force from its date, or merely a memorandum for an agreement thereafter
The purpose of the parties in reducing to writing what they had already agreed upon was to enter into a definitive contract covering the results of their oral agreement. Protracted negotiations had taken place between them. They had arrived at an understanding upon many matters which had been discussed. They had agreed that the pending suits to which they were parties should be discontinued, and that each should be released by the other from liability for past invasions or alleged invasions of tlie other’s rights. They had also agreed that each should have the right to use the inventions of the other in the future for manufacturing such pumps as each had been manufacturing in the past, and that licenses should be exchanged by which each should convey to tlie other the privilege to do so, and that “the consideration upon both sides should be equal.” They had also agreed to adopt uniform prices for pumps of the same sizes, and the same discounts as the minimum prices at -which each should sell their pumps in the future. To the extent of the understanding thus reached, the agreement which was reduced to writing was intended to be a finality. As to other matters, they had not fully come to an understanding. Among other things, they had not concluded fully upon tlie terms and conditions of the licenses which were to be exchanged. Various details relating to tlie manner in which their future business relations were to be maintained had not been adjusted, and these were intended to be left open for subsequent adjustment. The instrument was not intended to be merely a written memorandum to serve as the basis of an agreement thereafter to be consummated. Upon its face it purports to be a concluded contract so far as its provisions extend. If, as is insisted for the complainant, the instrument was ini ended to be merely “an agreement to agree thereafter,” there is no reason why it should have been reduced to writing and signed. It is silent as to any
It may be conceded that the language of the contract is so ambiguous in its provisions relating to licenses that it is incapable of any rational interpretation. It may be conceded, further, that the agreement does not of itself license the defendants to use the complainant’s patented inventions, but at best only confers upon them the right to compel specific performance of the covenant to grant the license. It may be conceded that the contract is so vague and uncertain in this respect that specific performance could not be enforced. It may be conceded that the agreement, and the readiness of the defendants to perform it upon their part, would not operate as a discharge and satisfaction of the complainant’s claim for damages for previous infringement of his patents. If the plea had been set down for argument, these points would have been open to discussion, and it is more than likely that the complainant would have prevailed. But the only question now is whether the facts set up in the plea are true. As they are found to be established by the proofs, the defendants must prevail.