5 F. Cas. 389 | U.S. Circuit Court for the District of Eastern Pennsylvania | 1872
The decision of this cause turns upon the applicability of a rule at law, settled by the highest authority, to the facts presented in the proofs. The defendant is a corporation, and has been for a number of years engaged in the manufacture and sale of sewing-machines. In 1866, the complainant went into the service of the defendant, as foreman. During that period of his employment, he was engaged in experiments with the tools and materials of his employer, which resulted in the production of the devices for which he obtained a patent on May 12, 1868, in pursuance of an application dated January 27, 1868. After he had invented these devices, and while he was in the service of the defendant, between October, 1866, and August, 1867, he made a number of sewing-machines for it, which embodied his subsequently-patented improvements. For his services during this period, he was fully compensated. On September 30, 1867, he entered into a written contract with the defendant, by which he stipulated to make for it, at a fixed price, -not less than five thousand of its machines, known as the combination button-hole and sewing machines, to be in all respects equal to a specimen selected as a standard. This specimen machine had in it the devices for which the complainant afterward obtained a patent. The contract also provided for the free use, by the complainant, of the defendant’s factory, machinery, and tools, and for the supply, by the defendant, of power, light, and all the materials necessary to be used in making these machines. It also provided that any machinery or tools bought or made by the complainant, partly or wholly at his own cost, for the purpose of facilitating the fulfillment of the contract, should, at the close thereof, be the property of the defendant, and be paid for at a price to be adjusted according to the terms of the contract. This contract seems to have been fully executed on both sides, and the relations established by it to have been terminated by the mutual consent of the parties.
Now the question is, do these facts amount to a “consent and allowance” by the complainant of the use of his invention by the defendant? In McClurg v. Kingsland, 1 How. [42 U. S.] 202, where the patentee was in the employment of the defendants, at a weekly compensation, and while so employed made experiments at their expense, which resulted in the discovery of an improved method of casting iron rollers, where he continued to use his new method in making rollers for them for four months, at increased wages, before he applied for a patent, proposed to the defendants to purchase his right and take out a patent, which they declined, and made no demand on them for thus using his improvement, nor gave them any notice not to use it, until a misunderstanding occurred between them, it was held that these facts “would fully justify the presumption of a license, a special privilege or grant to the defendants, to use the invention; that the facts amounted to a ‘consent and allowance of such use,’ and show such consideration as would support an express license or grant, or call for the presumption of one to meet the justice of the case, by exempting them from liability.”
Now, it seems to me that the facts in this case call more imperatively for the presumption of a license than in McClurg v. Kingsland [supra]. The complainant’s experi