150 N.Y.S. 273 | N.Y. Sup. Ct. | 1914
These actions are brought to require the execution of assignments of two patents, in order to complete the record title in plaintiff.
In 1890 the Weldon Company was doing business in Amsterdam, N. Y., and the Klauder Company in Pennsylvania. The two interests united and the Klauder-Weldon Machine Company was incorporated in Pennsylvania, one-half of the stock of the new corporation going to the stockholders in the Weldon Company and one-half to the stockholders in the Klauder Company. The basis of the stock holdings of Leonard A. Weldon was his ownership of his patents. Weldon was one of the large holders. In 1910 the plaintiff, a New York corporation, was organized by those in the Pennsylvania company for the purpose of taking over the assets and property of the Pennsylvania company. The said New York corporation is the plaintiff here. The defendants in the first action are the executors of Leonard A. Weldon. The defendant in the second action claims to be the owner of one of the patents in issue here by assignment from the executors of Leonard A. Weldon.
At the organization of the Pennsylvania company in 1890 Leonard Weldon, who was an inventor and had had long experience in the manufacture of machinery was chosen the business manager and vice-president, which positions he occupied until his death in February, 1901. On January 3, 1893, at a regular meeting of the directors of said company, the salary of the
There were issued to Leonard Weldon patents dated December 25,1894, August 18,1896, March 20,1900, and October 16,1900, which have never been assigned to the company; the last two being the patents in question in this suit. Each patent above mentioned was intended to be used in connection with the machines manufactured by the company. In each case the invention was made and tested in the shops where the
The more valuable invention in question in this action, an improvement for adjusting parts of the rack in the dyeing machine (the patent number of which is 659906), was made in 1897; the first machine embodying this invention was sold in January, 1898. Letters patent upon this invention were taken out in England, and the dyeing machines made by the company in England embodied this invention. Constantly from 1898 to the present day, the company has made its dyeing machines with this improvement on each. Since 1902 or 1903, the patent plate on these machines contained those two patents set forth in the usual form. When the New York company was organized, the Pennsylvania company executed an assignment of these two patents in the usual form to the New York company and said assignment was duly recorded in the patent office. The drawing furnished by Mr. Weldon,- from which to make patterns of this patent, when presented to the pattern maker, had on it the name, ‘ ‘ Klauder-Weldon Dyeing Machine Company. ’ ’ During the three years from January, 1898, to February, 1901, Leonard A. Weldon, made no claims for royalty or any other demand for the use by the company of this patent. No question as to the ownership of this patent arose in the lifetime of Leonard A. Weldon.
Mrs. Weldon testifies that she paid the patent fee after the death of Mr. Weldon; also that the patents were given to her by Mark Dewey. Again she says: “ I sent a draftsman up there to explain everything to
A letter was put in evidence dated February 25, 1901, addressed to the company, and written by Mark Dewey, the patent attorney, which letter informed the company that the patents in question had not been assigned. This letter was produced by Mrs. Weldon, who also is in possession of the letters patent. She says the letter came to her from Mr. Smith, who had
Mr. Giles, a witness for the defendants, had been constantly connected with the company since 1893; and, since in or about 1897, was the business manager and vice-president. Mr. Giles testifies that, at the stockholders’ meeting, January 3, 1893, Mr. Weldon stated, before the resolution was passed, that he had some inventions, some for which he already had made applications, some others, on which applications were being prepared, were in his patent attorney’s office, and one was in a ‘ nebulous ’ ’ condition in his mind. Mr. Giles was the business manager and vice-president of the company at the time the assignments were made in 1910 by the Pennsylvania company to the Hew York company. He knew of that assignment, and that it contained these two patents. He testifies to a conversation with Mr. Klauder, the president of the company, in 1901, in which the letter of February 25th was mentioned, and the fact that these two patents had never been assigned was also mentioned; and in which Klauder said, “We better let sleeping dogs
In December, 1901, the salary due Mr. Weldon was adjusted between the executors of Mr. Weldon and the plaintiff. At this time she testifies she had in her pos
Two defenses are urged; one the Statute of Limitations; and another that the contract did not include these patents. The Statute of Limitations is no defense. If, in the sale, January 3, 1893, these patents were included, then, upon the issuing of the patent, they were the property of the plaintiff and a written assignment was only necessary to perfect the record title; so that the one question presented is whether or not the resolution of January 3, 1893, covered the two patents. Under the resolution Weldon sold to the Dyeing Machine Company all his patents, applications for patents, inventions now made or made in the future. An invention is not a patent and it is not an application for a patent. It is a conception, an idea; it is a newly discovered thing, something that had not been known before. In 1893 ‘‘ inventions made in the future ’ ’ were intangible and unknown things, of which there could be no assignment in specific form. It could not be that the resolution covered only patents, and applications for patents, for it specifically says that it conveys also ‘‘ inventions now made or made in the future. ’ ’ These words must be given a meaning. The correct meaning of the resolution is had by striking out the word “ for ” before the words, “ all applica
A patent is issued for seventeen years. In 1913, thirteen years of this period had expired. Up to that time there had been no claim whatever that the plaintiff did not own these patents. The defendants and Mr. Leonard Weldon in his lifetime enjoyed as stockholders a share in the earnings from these patents. The patent which I have principally considered is essential to the success of the business in one of its
I have examined all the authorities that have been cited by the parties. My conclusion is that the plaintiff is the owner of the two said patents and is entitled to a written assignment of each.
Ordered accordingly.