80 F. 906 | 2d Cir. | 1897
The complainant is the assignee of ’letters patent No. 456,059, which were issued on July 14, 1891, to Albert D. Prentice, as inventor, for an improvement in machine for ¡•seaming tubes of sheet metal, and, as such assignee, brought a bill
In April, 1891, Prentice made an application for the patent in suit, which was granted July 11, 1891. Subsequently, upon an application filed September 3, 1891, by Edward F. Greenfield, the electrical superintendent of the defendant corporation, an interference was declared between these two claimants for priority of invention, which resulted in a decision in favor of Prentice, and it may be assumed that he was the original inventor of the machine described in his patent. He had made a wooden model of his invention prior to the fall of 1888, and in November of that year Greenfield called upon him to make inquiries about it, saw it, and said that he might be able to make some arrangements for its manufacture. Prentice’s story is that about January 1, 1890, Greenfield sent for him to come to the defendant’s shop, and agreed with him that he should build one of his machines at the company’s expense, that they should have an opportunity to test the probabilities of its success, and, if the invention proved satisfactory, they were to use it, paying as royalty one-eighth of a cent per foot of tubing manufactured by its aid. He was to take out a patent in the meantime, and was to be paid a mechanic’s wages for doing a mechanic’s work. He was, in fact, paid at the rate of $30 per week, and he entered upon their employment in January, 1890, but did not commence working upon these machines until about a year afterwards. From material furnished by the defendant, six or seven machines were made by him, or under his supervision, in its shop, which went immediately into experimental or practical use by the defendant. On August 3, 1891, Prentice sent to its president the following letter:
“jNew York, Aug. 3rd, 1891.
“Mr. Edwd. H. Johnson—Sir: I called at your office, 44 Broad street, to-day, but failed to find you. I am the Inventor and patentee of machine for making hook-seam sheet-metal tubes, as now used by Interior Conduit and Insulation Oo. I have failed to come to any agreement with your agent, Mr. Greenfield, in regard to the granting license, or the amount of royalties I should receive. I therefore take this opportunity to notify you to discontinue the use of said machines until such time as we shall come to a mutual understanding as to the amount I shall receive as a royalty on your invention.
“Kespectfully yours, Albert D. Prentice, 257 West 21st St., City.
“P. S. Date of U. S. patent, July 14, 1891.”
On August 5th he was discharged by Greenfield. On August 11th Johnson replied to the letter of August 3d, denying Prentice’s right to the patented invention, and claiming that, in any event, the defendant was entitled to use it. The question of importance in the case is in regard to the right of the defendant to use the machines which were made prior to August 3d. The complainant testified that the defendant had six or seven patented machines in use when he left. He afterwards said that seven dies were made in all during his continuance with the defendant, one of which was nearly completed when he left. No machines in addition to those substantially made or supervised by the complainant, which made use