154 F. 201 | U.S. Circuit Court for the District of Eastern Pennsylvania | 1907
This action, which was begun in December, 1896, was originally a bill in equity brought by John I. McDuffee, trustee, against the Hestonville, Mantua & Fairmount Passenger Railway Company, and was based upon an alleged infringement of letters patent granted for certain improvements in electric
There is little dispute about the facts, and I shall state them as briefly as may be consistent with clearness. The application and patent in suit had been in controversy for several years before 1906 — when this dispute about title arose — and other actions had been brought upon it in other jurisdictions. These actions, or most of them, were defended by the electric company, which was the real defendant, and after a while that company concluded that it would be cheaper and less troublesome to buy the patent than to go on with the litigation. Accordingly negotiations were carried on with McDuffee at intervals during a period of some length before the transaction that is about to be described. And, in order to consider one question at a time, let it be assumed for the present that McDuffee — although described as 'trustee — was the absolute owner of the patent, and was therefore dealing in his own right, while these negotiations were going on. Bearing this assumption in mind, what took place was this: After the preliminary negotiation between McDuffee and the electric company had been prolonged to the early part of June, 1906, McDuffee wrote and delivered the following letter in the office of Mr. Buckingham, who was one of the New York counsel of the electric company:
“C. L. Buckingham, Esa., 38 Park Row, New York, N. Y.
“Dea^ Sir: In the matter of the Schlesinger litigation and the suggested compromise, I would state that I will give your company, the General Elec-*203 trie Company, an option until .Tune 9 to acquire all right, title and interest in all letters patent upon which suits hare been brought by me or in connection with the Schlesinger interests, and also the control of said suits and all rights of action under said patents, with possible damages, past, present, and future, l'or the sum of twenty thousand dollars ($20,000.00). This offer and option is to be without prejudice.
“Very truly yours, Tohn I. McDuffee, Trustee.”
As Buckingham was not empowered to accept such a proposition, he sent it, on the same day, to the general counsel of the electric company, and upon the morning of June 9th received the following authority from a fully accredited representative of the company:
“Now York, June 9, 1900.
“Charles L. Buckingham, Esq., 38 Park Row, New York, N. Y.
“Subject — Schlesinger Patents.
"Dear Mr. Buckingham: Referring to the question of purchasing the Schlesinger patents for the sum of §20,000, which you had up with Mr. Neave, and to my telephone conversation with you of this morning, this is to confirm the understanding that you are authorized to purchase these patents on behalf of the General Electric and Westing-house Companies for the sum of $20,000, such purchase to include all claims for past damages, etc.
“I understand that you are to call up the parties on the telephone this afternoon to inform them of our acceptance.
“Very truly yours, Charles A. Terry.”
Anticipating that the offer would be accepted, however, Buckingham had prepared on June 8th, but had not mailed, the following letter, addressed to McDuffee, whose residence was in Philadelphia:
“New York, June 8, 1906.
“Mr. John I. McDuffee, 2201 Spring Garden St., Philadelphia, Pa.
•‘Dear Sir: Respecting your offer of June 4, 1906, contained in the following letter, addressed to me:
“ ‘In the matter of the Schlesinger litigation and the suggested compromise I would state that I will give your company, the General Electric Company, an option until June 9 to acquire all right, title, and interest in all letters patent upon which suits have been brought by me or in connection with the Schlesinger interests, and also the control of said suits and all rights of action under said patents, with possible damages, past, present, and future, for the sum of twenty thousand dollars (820,000.00). This offer and option is to bo without prejudice.’
“I am pleased to say that I am authorized to accept such offer under the terms and conditions therein set forth.
“Very truly yours, C. B. Buckingham.”
Immediately on receipt of Mr. Terry’s letter, between 10 and 11 o’clock on the morning of June 9th, Buckingham mailed the foregoing letter, dated June 8th, and shortly afterward, during the same morning, called up by telephone Mr. A. B. Stoughton, who was McDuffee’s counsel in Philadelphia, and was aware of the offer that had been made on June 4th. In this conversation Buckingham informed Stoughton that a letter accepting McDuffee’s proposition had been mailed to the latter at his address in Philadelphia, and informed him, also, that a copy of the letter had been mailed to his office for immediate delivery to McDuffee. As it happened, McDuffee was in Stoughton’s office when this communication took place, and was himself called to the telephone. Thereupon Buckingham informed - him directly that his offer had been accepted, and that a letter to that effect had just been
“New York, June 8, 1906.
“Augustus B. Stoughton, Esq., 1506 Land Title Building, Philadelphia, Pa.
“My dear Mr. Stoughton: I now have authority to accept Mr. McDuffee’s recent proposition for settlement of the Schlesinger litigation and for the purchase of his patents, and herewith enclose, in your care, a letter to him to that effect. X have also written him to his address, which we have, ‘2201 Spring Garden Street, Philadelphia,’ but thinking that possibly he might have moved or might be away, I also send a duplicate of that letter to you, which I wish you would give him tomorrow, if possible.
“Very truly yours, O. L. Buckingham.
“Enclosure.”
Buckingham’s original letter to McDuffee did not reach him on June 9th, and — the next day being Sunday — was not received until the morning of June 11th; but, as will appear from the foregoing facts, the delivery of the letter on Monday was not material, for a valid acceptance of the offer had been made on Saturday by parol over the telephone. Neither is it material to inquire what the precise meaning of the phrase “until June 9” might have been declared to be, if that date had passed without further action by either party. Whether the word “until” excluded or included June 9th seems 'to me to have become unimportant. Upon that da)’ the two interested parties were in communication, practically face to face. The offer was then accepted without demur or question; and, having thus become a contract, further steps were taken upon the same day in order to carry this mutually recognized agreement into effect. In other words, both parties showed by their conduct that the offer of June 4th meant that an acceptance on June 9th would be in time, and certainly neither party can now be allowed to say that this construction, thus acted upon by both, was not correct.
Stoughton immediately undertook to prepare the papers referred to in the telephonic conversation between Buckingham and McDuffee, and on June 12th wrote the following letter:
“Pliila., June 12, 1906.
“C. B. Buckingham, 38 Park Bow, New York, N. Y.
“Dear Sir: I expect to have the assignments ready tomorrow and will have them executed by Mr. McDuffee. Possibly I better send you a copy so that you may see whether you want any corrections or additions.
“Yours very truly, Augustus B. Stoughton.”
He wrote again on June 14th, saying:
“Dear Sir: I enclose herewith a draft of an assignment from Mr. Mc-Duffee to your company, and if you approve the form of it we can settle up the matter at once. Any suggestions that you want to make, I would be glad to receive. I also send by registered mail the various assignments that show McDuffee’s title, and with which T believe you are familiar.”
In this letter a draft assignment was inclosed for Buckingham’s examination, which need not be set out in full. It recited the chain
It conveyed, also, “all rights of action under said letters patent, or any of them, together with possible damages and profits, past, present, and future, for infringement,” and gave to the electric company “control of each and every suit which has heretofore been brought upon said letters patent or any of them.”
Stoughton’s letter of June 14th did not contain the other papers to which it refers, and he explains the omission in his letter of June 15th:
“Phila., June 15, 1906.
“C. I/. Buckingham, 38 Park Row, Now York, N. Y.
“Dear Sir: It seems that I did not have all of the assignments in the Mc-Duffee matter, and therefore did not mail them as I promised to do in m,v letter which reached you this morning.
“Yours very truly, Augustus B. Stoughton.”
And he had not received the missing papers six days later, when he was again in communication with Buckingham, the reason being now clear enough, for on June 16th McDuffee, who had been negotiating before June 9th with the Allis-Chalmers Company, as well as with the electric company, agreed to sell the patent and the pending suits to the former company for $20,000 in cash and 25 per cent, of such net profits as might be recovered from infringers; this being a larger price than he had been offered by the electric company. Having entered into this more favorable agreement with the Allis-Chalmers Company, McDuffee wrote the following letter to Buckingham:
“Philadelphia, June 21, 1906.
“C. L. Buckingham, Esq., Attorney and Counselor at Law, New York.
“Dear Sir: Referring to my recent letter in reference to the acquisition by the General Electric Company of the interests in the Schlesinger patents in suit, I have to state that there has been so much delay and uncertainty whether the matter would be consummated by your clients that I have availed myself of the opportunity to make other arrangements in regard to these patents.
“I am obliged for the interest that you have taken in the matter, but my experience in the past has been such that I could not afford to depend upon your clients taking these patents, as I had nothing definite from you, and it was necessary that I should act promptly.
“Very respectfully, John I. McDuffee.”
To this communication Buckingham replied on June 22d:
“New York, June 22, 1906.
“Mr. John I. McDuffee, 2201 Spring Garden St., Philadelphia, Pa.
“My dear Mr. McDuffee: I have just received yours which is as follows:
⅜ ⅜ ⅜ ⅜ ⅜ * * ⅜ * *
“Clearly any such repudiation of our agreement would place me in a very ridiculous position, and I am sure that what you have written has been in*206 considerately done. The closing up of the title necessarily involved a considerable labor in the proper preparation and execution .of title in this particular ease; but this I have at all times been ready to do, although very busy with some other matters.
“I have been awaiting further papers from Mr. Stoughton, which in his letters he had promised to send me, and it was only yesterday or the day before that he called me up, saying that he thought such further papers as we needed were to be found in the Schlesinger record; nor did he intimate that there was any such haste as would be implied from your letter.
“If you have any substantial doubt as to our good faith in the matter, I will send you my own check for a thousand dollars.
“I cannot agree that it is your privilege to repudiate our agreement, and I accordingly now say that I am ready to meet you or your representatives immediately to close it up. I merely wish to make sure that the chain of title which we are to receive is correct and complete; and this I assume may be done in any two or three hours by Mr. Stoughton and myself.
“Very truly yours, O. L. Buckingham.”
On June 23d he answered further:
“New York, June 23, 1906.
“Mr. John I. McDuffee, 2201 Spring Garden Street, Philadelphia, Pa.
“Dear Sir: I am surprised that, in reply to my letter of yesterday relating to your proposed repudiation of our agreement for the sale and transfer of the Schlesinger patents and other matters relating thereto, you have not called me on the telephone. I sincerely trust that you may not persist in your purpose to repudiate our agreement. The contract between us was complete and valid, and, as I told you yesterday, we are fully prepared to close the transaction and to pay you the twenty thousand dollars (the price agreed upon), upon a transfer of title to us. We ask and demand performance on your part, and this we do with the assurance to you that the price agreed upon will be paid to you immediately upon the execution of any suitable assignment.
“Very truly yours, O. L. Buckingham.”
To these letters McDuffee replied on June 26th:
“Dear Sir: Replying to your favor of the 23d inst, I have already stated in my last communication all that can be said on the subject.
“Regretting my inability to add -anything further, I am,
“Very respectfully, John I. McDuffee.”
This closed the correspondence, and nothing more need be said about the transaction, except to add that .the Allis-Chalmers Company was aware of the proposition of June 4th, and of the electric company’s acceptance, dated June 8th, before the subsequent agreement of June 16th was made, and that this agreement was carried out by the parties thereto; the $20,000 in cash being paid by the Allis-Chalmers Company, in return wherefor it received, on Septembér 5, 1906, an assignment of the patent and of the pending suits, with such other papers as were necessary to confirm McDuffee’s legal ownership of the patent and to ratify his undertaking to sell.
It' will be seen, therefore, that the situation was this: An owner of property, which both A. and B., who are rivals in business, regard as a desirable purchase, gives to A. an unconditional offer to sell before a given date. Within the time limit A. accepts unconditionally and the owner declares his acceptance to be satisfactory, directing his own counsel to take the necessary steps to transfer a good title. While the formal transfer is still incomplete, B., who knows of the owner’s
But it must not be forgotten that this conclusion rests upon the assumption that McDuffee was the absolute owner of the patent and had the undoubted right to sell; and it therefore becomes necessary now to inquire whether the conclusion should he modified if the fact turns out to be that -McDuffee was not the absolute owner and had no right to sell the whole interest in the patent. That his title was in truth thus qualified — that he was only a trustee as to much of the beneficial interest, and had no power to convey the whole title — does not admit of question. As early as January 82, 1894, A. H. Williams, who was then the legal owner of the whole title to application No. 183,871, conveyed it, with other interests, to Schlesinger, “his assignees and successors in trust as herein provided,” defining the trust as follows:
“The said William M. Sclilesinger and Ms successors in the trust, to have and to hold the same in trust, without power to sell, incumber, or otherwise dispose of said patents and applications, renewals, extensions, or other interests therein obtained, for the following named persons, to wit: William M. Schlesinger, Susan E. McDuffee, and the said Alfred H. Williams.”
On March 6, 1895, Schlesinger assigned the same interest, “so far as I have any right so to do, unto John I. McDuffee, of Philadelphia, Pennsylvania, trustee.” The result of these conveyances, which were duly recorded in the Patent Office in 1894 and 1895, respectively, was to assign to McDuffee individually Schlesinger’s interest in the application No. 183,871, and to make McDuffee the trustee for the equitable interests of Susan McDuffee and of Williams. On September .28, 1894, Susan McDuffee, who was the wife of John I. McDuffee, died testate, giving the residue of her estate, including her interest in this application and patent, to William S. Ferguson, as trustee — after-wards succeeded ip the trust by James B. Watson — -“in trust during the lifetime of my husband, John I. McDuffee, to pay over to him, from time to time, the net income, free and clear of his debts, contracts, engagements, alienations, and anticipations, and free and clear of all levies, attachments, executions, and sequestrations: it being my intention that he shall receive this income from time to time for his personal benefit, and that his creditors or assignees shall receive no benefit therefrom.” This will was duly recorded in the county of
The condition of the title thus described was well known to all parties concerned, and therefore, when McDuffee’s offer of June 4-th was made, the electric company understood that he alone could not convey a good title, and that the consent of his trustee and also of Williams must be obtained before a valid assignment of the whole patent could be made. Undoubtedly McDuffee’s offer implied that he would procure the consent of these persons; but, just as undoubtedly, the electric company took the risk that he might afterwards be unable, or might refuse, to carry out his implied contract in this respect. If it be supposed for the moment that the assignment to the Allis-Chal-mers Company had never been made, but that the sale to the electric company had fallen through, merely because Williams, or McDuffee’s trustee, had refused to be bound by McDuffee’s offer of June 4th, the electric company would have had no legal or equitable right to compel the cestuis que trustent to carry out a bargain that they had neither authorized nor ratified; and, whatever the electric company’s right against McDuffee himself might have been to recover damages for his breach of contract, it. would have had no right of action of any kind against the owners for whom McDuffee was simply the trustee. The terms of his trust expressly denied him the power to sell, and, of course, he could not enlarge his competency by his own act, and thus enable himself to take away the property of others without their consent. .
If, therefore, I repeat, the assignment of June 16th to the Allis-Chalmers Company had never been made, the electric company could not be granted the decree of specific performance for which the cross-bill prays. The agreement of which the court is asked to compel the performance is an agreement to convey the whole title, and undoubtedly the electric company would be content with no less. But, as Mc-Duffee could not convey what he never had, and as the court has no power over persons who are not parties to the cross-bill — even if it
It remains briefly to consider the argument that the record contains evidence from which it may properly be inferred that McDuffee, trustee, did have authority from his cestuis que trustent to sell their interests on June 4th, when he made the offer to the General Electric Company, and therefore that they are bound by his action. I do not think it necessary to discuss this evidence at length. It consists in part of McDuffee’s own declarations that he was authorized to sell, and of his acts in agreeing so to do, and, upon familiar principles, his agency cannot in this way be established. There is one written instrument, however, that was signed by the cestuis que trustent themselves, and it is upon this paper that reliance is chiefly placed to show the existence of McDuffee’s agency on June 4th. The writing is dated September o, 1906, and after reciting the title to McDuffee, trustee, and setting out, also, the fact that the trustee had no power to sell, it then refers to the agreement of June 16th with the Allis-Chalmers Company, and goes on, in the name of the several cestuis que trustent, to “severally and collectively ratify and confirm the aforesaid assignments from William M. Schlesinger to John I. Mc-Duffee, trustee, and from John I. McDuffee, trustee, to the Allis-Chalmers Company, and [we] do hereby release, sell, assign, transfer, and convey to the aforesaid Allis-Chalmers Company, for its own use
This leaves nothing to be disposed of, except to order the payment -of the costs that have accrued upon the supplemental bill, the cross-bill, and the proceedings .that have followed thereon. Upon this subject I shall only say that, considering the equities that have been disclosed by the evidence and referred to in this opinion, I think the dis■cretion of the court will be properly exercised by directing that the
An appropriate decree in accordance with this opinion may be prepared by counsel.