35 Minn. 146 | Minn. | 1886
The plaintiff is the patentee of certain improved grain elevators, which were adopted by the defendant’s assignors, and manufactured and sold by them in connection with a large number of their harvesting-machines, and which it is claimed were found to be necessary to the successful operation of such machines, and greatly increased their salability and value in the market; and he claims to be entitled to collect and receive of the defendant a reasonable sum or license fee for the use of each of such patented inventions, which is alleged to be five dollars for each machine. He claims under two patents issued to him, the one dated April 27, 1880, and the other dated July 19, 1881, the benefits of each of which it is alleged have since
1. In respect to the cause of action last mentioned, we think the evidence in plaintiff’s behalf fully sustains his right of recovery and the amount allowed by the jury, and this branch of the case may therefore be dismissed without further consideration.
2. It is admitted that the use of the patents by the harvester company was not properly an infringement. It was not tortious, but with the consent of the plaintiff. It also appears that the plaintiff, during the period of such use, was a director of the company, and a part of the time its president, and that after he ceased to be such officer he was, in November, 1881, appointed patent director, for which a compensation was to be fixed. He also had a salary while president. It does not appear, however, that any compensation was ever fixed or allowed him, as patent director, or that his salary as president was, or was intended to be, compensation for special services in making inventions or improvements, or securing patents. We see nothing in the case necessarily inconsistent with his individual or private right to make such inventions, and secure a patent therefor as his own peculiar property, and to exclude the use thereof by the company without his consent, if he elected to do so. In McClurg v. Kingsland, 1 How. 202, relied on by defendant’s counsel, the plaintiff’s action was for an infringement. The patentee was a laborer employed by the defendants, and while in their employ was engaged in making experiments, which resulted successfully, and on account of which his wages were increased. The circumstances were held to be such as to authorize the jury to presume a license. And to the same effect are Wilkens v. Spafford, 3 Ban. & A. Pat. Cas. 274; Chabot v. American Button-hole Co., 9 Phila. 378. It is evident, however, if in any case a recovery can be had for a use not tortious, and where no compensation is expressly stipulated for, that the question
The circumstances under which the plaintiff’s invention was applied and used, and his relation to the company, were accordingly submitted to the jury by the trial court for their consideration upon the question whether there was an implied understanding that such use was to be for a compensation. And at this point it may be well to consider the exception, strongly insisted on and elaborately argued by the counsel for the defendant, to the following legal proposition laid down by the court in the course of its charge to the jury: “And here comes in a very important question in this case, and that is, was there an implied contract here with the Harvester Works to pay a reasonable compensation for the use of these inventions ? There is no claim here that there was any express agreement to pay a compensation for that use. It is claimed, however, that there was an implied contract. Where a pa#rty has availed himself of the services or used valuable property of another, such as an invention, the law, in the interest of justice, will imply an agreement to pay a reasonable compensation, unless the circumstances attending such use are of such a character as to justify the conclusion that it was the understanding of the parties that the use was to be gratuitous. A man has a right to render a voluntary service, or give a right to use his property, to another, without remuneration, and if he does, he cannot after-wards recover for such services or use of his property; but it does not follow that his mere neglect to demand a specific agreement for compensation, or to forbid the use of his property, necessarily deprives him of his right to a reasonable remuneration. The circumstances, however, may be such as to show that the understanding of the parties was that the services rendered, or the use of the property, was to be without compensation; and in that ease the party cannot recover. It is not necessary that there should be any express agreement to that effect; that there should be any express statement in words that they might use it without compensation. The attendant circumstances may be such as to show that such was the understanding of the parties, to the satisfaction of the jury.”
Where the evidence fails to disclose an express agreement or understanding, the law may imply a contract from the circumstances or the acts of the parties; and where there is nothing from which a contrary intention or understanding is to be inferred, it is a just and reasonable presumption that he who has received the benefit of the services or property of another impliedly undertakes to make com-jiensation therefor. “Implied contracts are such as reason and justice dictate, and which, therefore, the law presumes that every man has contracted to perform.” 3 Bl. Comm. *158; 2 Kent, Comm. *450; Bouv. Law Diet. “ Obligations, Implied; ” 2 Greenl. Bv. § 108.
A patent is a mere monopoly or exclusive right to an invention, not existing at the common law, but by special grant from the government. The defendant therefore contends that, unless there is an express contract defining the terms of use by a licensee, the patentee is confined to the remedy provided by the patent law for an infringement, by an action on the case for damages, and that there can be no such thing as an implied license for compensation.
There is very little authority on the subject, as the question of implied license has usually arisen in actions for infringement, and as such is for a tortious use or piracy, and the existence of a license, express or implied, is always a sufficient defence. But an action upon a contract, express or implied, for compensation for the use of a patented invention, or for license fees, is not one arising under the patent laws; and, notwithstanding the nature of the subject, common-law principles are applicable, as in other cases. Thus, in McClurg v.
Recurring again to the question of the relationship of the plaintiff to the defendant as president or director at the time, as affecting his cause of action, it was held in Rogers v. Hastings & Dakota Ry. Co., 22 Minn. 25, that the defendant corporation, of which the plaintiff was a director, might be held liable upon an implied assumpsit to pay the reasonable value of services rendered for defendant outside of his duties as director.. He could not, as director, aid by his vote in fixing the amount of such compensation, for in that case there would be a conflict of interests inconsistent with his official duty. Jones v. Morrison, 31 Minn. 140, 148, (16 N. W. Rep. 854.) But the rule is not,
Upon the directors was imposed the duty and authority, which was exercised by them, of determining the character and number of the machines to be manufactured. The improvement was appropriated and used by them, or under their direction, on behalf of the company; and the continued acquiescence of the corporation for several years sufficiently indicates its approval. Rider v. Union India Rubber Co., 5 Bosw. 85, 96.
3. The patents were of themselves prima facie evidence of the utility and novelty of the inventions; and the evidence in the case raises no question as to plaintiff’s right to a patent. The answer denies knowledge or information sufficient to form a belief as to the novelty and utility of the patents, and the number of machines in connection with which they were used. The objection is now urged by the defendant that the second patent appears to be for the same invention as the first, and covers no new improvement. In respect to the second patent nothing was claimed for it on the trial in addition to the first, except an improvement therein in the single particular of a “link-belt, ” which the wdtness Levalley, who was superintendent of the defendant’s works, and testified as an expert, described as “a link-belt that connects the power from the initial crank-head to the upper drum or pulley.” Upon the evidence of the witnesses as to the use of and value of this device, which was suffered to go to the jury in connection with the models, we are not prepared to say that the trial court was not right in submitting to the jury the question as to the utility of the alleged improvement, and whether there was anything of prac
No notice is given in the answer , of any intention to contest the validity of either patent upon any specific ground, and the denials simply put the plaintiff to his prima facie proof of their utility and novelty, and the point was not made on the trial that either patent was legally invalid on account of double claims, but only that the second patent contained nothing not included in the first. And we think the better opinion is that in an action of this kind, where the •licensee has enjoyed the use of a patent under a contract with the patentee, the former is not permitted to raise questions as to the validity of the patent, as between the patentee and the United States, where such licensee has not been disturbed in the enjoyment of the same. If the defendants are found to be using the same under an implied agreement for compensation, the plaintiff allowing them the ■exclusive use, good faith would seem to require that they should have notified him of their renunciation of the license, and a denial of his claims, before repudiating their obligations under it. Marston v. Swett, 66 N. Y. 206, 212; Marsh v. Dodge, 4 Hun, 281; Walk. Pat. §§ 177, 307.
4. There was evidence sufficient to warrant the jury in finding an implied license for compensation. It is not necessary to refer to it in ■detail. It is sufficient to say that the evidence tended to show that the patents were the property of the plaintiff, and that they were adopted and used by the company; that the directors had notice of the invention, and ordered the required number of machines to be built with it, and that none were subsequently made without it; that it was advertised in their circulars and engravings as a part of their machines; that they were allowed the exclusive use of it by plaintiff; that it proved to be of great value, and increased the sales and profits of the business, while the expense of adding the improvement to each harvester was trifling; that the machines were made under
5. Upon the question of damages it is undoubtedly true, as defendant contends, that the proper rule in such cases is a reasonable royalty for each machine. This was so charged by the court. In this case there was no established royalty. The patents were used solely by the defendants. They have never been put upon the market. Hence other evidence must necessarily be resorted to. The plaintiff did not claim, as the basis of his damages, the profit which the company may have derived by reason of the improvement, but a reasonable fee for the use thereof for each machine. In order to ascertain what would be a reasonable royalty in such a case the plaintiff is-compelled to resort to general evidence, and the evidence of experts,, as the best and only evidence which the nature of the case will admit of. Burger v. Northern Pac. R. Co., 22 Minn. 343; McKeever v. U. S., supra. Accordingly, evidence was admitted showing the nature,, operation, utility, and value of the improvement, and also the testimony of experts, on both sides, to the same points, the evidence on. the part of the defendant tending to show that it was of no value,, and the same was submitted to the jury under proper instructions.
Order affirmed.