6 F. 493 | U.S. Circuit Court for the District of Southern New York | 1880
Letters patent for an “improvement in canopy-tops for children’s carriages” were granted to'Calvin E. Fosburgh, May 29, 1877. On, the, seventh of January, 1878, an agreement in writing, under seal, was éxecuted by and between Eosburgh and Charles W. E. Dare, the plaintiff, and recorded in the patent-office January 9, 1878, whereby Eosburgh granted to Dare, for and in. consideration of the covenants therein contained, to be kept'by Dare, the sole and exclusive right,-license,; and. privilege to-manufacture, use, and sell canopy-tops, embodying the invention covered by said patent, for the full unexpired term of the same, with the exclusive right to grant sublieenses to other parties,-under said patent. As.-.a consideration, Dare -thereby agreed to pay to Eosburgh; as-a-’royalty or patent fee, 25 cents for each cahopy-t'op and child’s carriage provided with the canopy-top made and sold by or on behalf of, or with the license or consent of, Dare, containing said invention; payments of royalty “to be made quarterly, — that is to say, on the first day of January, April, July, and October, or within ten days thereafter, of each and every year” during the continuance of the agreement, — for all the said articles made and sold by or on behalf of, or with the consent of, Dare, “during the three months preceding the respective dates of payment;” each payment to be accompanied by a statement, under oath, of Dare, setting
Application for a re-issue of the patent was made January 18, 1878, on a specification signed by Fosburgh January 7, 1878, and a re-issue was granted to Fosburgh, No. 8,074, February 5,1878. The plaintiff now brings suit against the defendant on the re-issue, alleging infringement. The answer sets up that any right granted to the plaintiff became null and void before this suit was brought, because the grant was made subject to conditions which have not been fulfilled by the plaintiff, and that the defendant has acquired, by an instrument in writing from Fosburgh, made April 7, 1878, the right to make and use and sell articles containing said invention.
The plaintiff was and is a manufacturer of children’s carriages, having an office in the lower part of the city of New York, and a factory in a distant part of said city. Immediately after the execution of the instrument of January 7, 1878, Fosburgh entered the employment of the plaintiff at his factory as a painter. The plaintiff, prior to April 1,1878, employed the patented invention to such an extent that on that day there was due to Fosburgh, as royalty, under said instrument, $105.25, less $60 expenses of the re-issue, leaving a
There was no communication between Dare and Fosburgh from the second of April until the twelfth of April. On the latter day Fosburgh went to Dare’s factory. This is Dare’e testimony: “As I was going in the office, I met Mr. Fosburgh coming out. I asked him why he was not at work. He said he was not working; he was going down town. I asked him if he would call at the store and get the amount due him, or if I would bring it to the factory for him. ITe said he guessed not; that the time had passed at which he should receive his royalty, and that the contract was no longer good, and that he did not intend to go to work for me again. I told him it made no difference about his working; that the contract was another thing, and was as good as it ever was; that it was his fault that he did not have his money, not mine; that I had given him notice that it was ready for him; that my time and attention had been so much occupied that I had not thought to bring it to him. He then started to go out of the office, and I again asked him if he would not call at the store and get the amount due him. He said that he didn’t know that he would; that he had taken legal advice, and that they told him that the agreement was no longer in force.” The same evening Dare tendered to Fosburgh $45.25, and an account, sworn to that day, of articles made and sold under said agreement, from January 7th to April 1st. As a memorandum of what transpired, the parties then signed this written statement on the back'of the account: “He refuses to accept it to-night, 11 p. m., April 12, ’78; does not say or will not say what he will do to-morrow.” The next morning the parties met again, and Dare renewed the tender, but Fosburgh declined to accept the money. On the fifteenth of April, Dare sent to Fosburgh a letter, which he received either that day or the next day, saying: “The amount of royalty due you to 1st inst., ($45.25,) of which I advised you on the 2d inst.,
The defendant contends that the failure of Dare to render a statement and make a payment on the first day of April, or within ten days thereafter, worked, ipso facto, a forfeiture of his rights under the agreement, by its terms.
It is quite clear that the first ’statement and the first payment became due on the first day of April, and that the position taken on the' part of the plaintiff, that no statement and no payment became due until the end of the first full quarter year named in the agreement, namely, until July 1st, is not a sound one.
This' is not a contest between Fosburgh and Dare. Fos-burgh is willing that the agreement between him and Dare should be regarded as existing. He has recognized its continuing existence. He never forbade Dare from making articles under the patent, and never took any legal proceedings to enjoin him- from doing so. Nor did Boylston and Butler. Boylston and Butler paid Fosburgh no consideration
The foregoing remarks are made on the view that it was incumbent on Dare to seek out Fosburgh within the ten days from April 1st, and tender him the money and the statement. The agreement was a peculiar one. There would be sixty-six payments and accounts to be made during the life of the patent. No place was specified where they were to be made. It was an accident that Fosburgh happened to go into Dare’s employ. The parties had given no practical construction to the contract, so as it made it reasonable for both to understand that a given way of making payment had been agreed on. Under all the circumstances in evidence it must be held,
The defendant takes the point that the invention patented is not useful. There is sufficient utility in it to support a patent. All that the evidence amounts to is that the article is better with an added improvement. Moreover, no such defence is set up in the answer.
There must be a decree for the plaintiff for a perpetual injunction, and an accounts of profits and damages, with costs.