BRACHER
v.
BAT-SWEAT lIlANUF'G CO.
921
If this pigment was the equivalent of the white lead, and this varnish of Benguela varnish, as they may have been, the turpentine, and magnesia or soap-stone are .left out of the composition, and it was accordingly different from that of the patent. The screening is wholly left out of the process, and simple of the plates, after the coating, left to take the place of baking 48 hours, at 125 deg. Fahrenheit. Neither the composition nor the process so shown are the same as those of the method of the patent. That they may have been the same, and that the defendants could have shown them to have been different, if they were, and have not, is relied upon to make out that they were. In Wylde v. Railroad Gb., 53 N. Y. 156, referred to for support to this argument, there was some evidence tending to show that the defendant was one of those liable; and whether it was or not could be made to appear from written contracts· in its possession, and not produced. The court said: "The defendantskriowing the truth, and omitting to speak, every inference warranted by the evidence should be indulged against them." Here infringement is denied in the answer, and was to be proved. The orator does not even say that he thought the metal of the box was prepared for printing by his method, but only described a method not his. The omission to produce evidence will not supply evidence wanting on the other side, although it will strengthen that which is slight. That the defendants have used the orator's method does not appear to be proved by any degree of evidence. Therefore the bill must be dismissed for non-infringement. Bill dismissed.
(O£rouit Oourt, 8. D. New York. A8aXGlQIBNT.OJ'
April 5, 18l1'.l.)
Where a manufacturer owning certain patents, in pursuance of an agreement \0 form a corporation which is to include the properties of several rivals, and of which is to the general manager, assigns his patents to the corporation witl!.out reservation or condition&, except that the company is not to assign them to any one else while he continues to hold his allotted proportion of its stock, such assignment cannot be considered as subject to the condition that he shall be retainlld in his position as manager, and his discharge by the company, whether with or without cause, will not revest in him any interest in the patents.
Ol' CONTRAOT,
In Equity. Suit by Thomas W. Bracher against the Hat-Sweat Manufacturing Company. Bill dismissed. Arthur v. Briesen and Esek Cowen, for complainant. Julien T. Davies and John R. Bennett, for defendant. COXE,
District Judge. Nominally this is an action for theinfriQgement
'Of two letters patent. Its real purpose, however, is to test the validity .of an instrument by which the complainant assigned these patents'to
922' tbedefendantin·
,.'.r, FEPERAL
vol. 49,
ant.
Qoruplainant charges..,..-First. That f()J:ged., Thakif the signature is ,genuine the instrument. itself, or the grel,l.ter part is fraud ulent. .That if.·the'instrument isgenlline.in all relfPllCts, it was improperly used,. and did .not operate to .transfera vlilid title to the defend.
..
sml,
,
.
".
iThe first of. these oharges.was disposed of at the; argument. . ·There is nothing'in the,relWrd,worthy the 114mtl of evidence, to. impeach. the of the:signature.AJ)1ong,the many witnes,Eleswho prove it to be ge:nuine is the,complainant himself. while not eo overwhelmingly. disproved, has little of'8substantialnature to rest upon. ,n is said, c()ficeding that complain. Bnt signed the' sheet of the assignment, that ,thE!. ptber sheets were . The reasoning in su pportoCthis, charge is as fol.. ad'ded . 10'ws:Ji1irst.'1'he· last. page was .. signature I)f complainant . was "affixed. The. second and tbir«r iP4lges never were copied,8t all,and.thefirst page w:aa copied after being ,recorded in the patenooffioe...,.. &crmd. On the last two pages there three brad-holes and .!on the firsttwo two brad·holes. Pages 1 are not numbered Third.. Th,bQijly ofth.e paper and itbe name of the first:subscribing witness is in. the signature of complainant and 'thesigQature of the second another ink; FUIl/rtX. ,.,The previous pages have been spaced .to the.la,st page of the assignment. out, but the foregoing are the principal ones. Assuming that an of these propositions are fully established, they absolutely fail to sustain the grave accusations made against the defendant-and its agents. Fraud must be proved; it cannot be inferred or maintained by speculation or conjecture. To destroy property rights and strike down private character for the reasons advan'cad would be alike without precedentHl.Dd without principle. But the foregOing propositionSQ1'6Ilot established;)) The testimony that the sheets of the Bssigmnent were copied at different. times was ren· valpeless when the writiu!t was made by the. very witness 'who pron()unced the lnstrument ungemune because of tpe,se"in'lilposed The page was of tm lUlsignment of leases, from which it was removed anci:f#Mi.tlently'attached to the three preceding,pllges ;of the in8tru· ment in question, is rendered untenable by an examination of the last page itself. The first sentence on the last page which the complainant mullt haveseeri is as followsc "Of its legal representatives to the full end of the'l'esp,ective terms for :whi'ch severa}Jqtters Ilndeach of them. &I:e gi'anted." After this sentence, which unquestionably does'"not refer to leases and unquestionably does refer to letters patent, appears the assignment of lioonses referted to; 'It 'is as fo11o'*,s:' .' r ' ! "And I do hereby fU1'theraSltign, selJ;transfer and set over unto the sald and all interest whatsoever, that I
923 may have'iJ!-' to and .under existing contractl! and In, to and unaer the said several inventions and letters patent or either of them and am,6untl! due thereOn or to accrue by reason thereof.",
,Other Qircumstances, as suspicious, have bee:tl fully explained. When ,to all this is added the faotthat therewM. nc> reason or tnQtiv.e for. the commission of orime; that the defendant, as will be seen on, was to an assignment of the. patents in question, and, iftbe compb.inant. :had refused,a court of equity would him to assign, the last suspicion of wrong-doing disappears and not even 91j:ls}w:dow of fralld remainlil·. ,It thus appears that in March, 1882, the complainant, by an instrument, executed without fraud, duress or mutassigned to the defendant the patents which is (:hatgj:ld with infringing. . . ' ' ,..' Itm,ight, perhaps, be aaid that the court need not proceed further, but.ahould dismiss the bill at this point. The theory upon which the action rests, as expressly charged in the bill, is that this assignment was n'ever ma.de executed by the complainant "in anyway, shape or manrier wbatsdever."'This proposition has been complt:tely overthrown. Such being the condition of the pleadings and proofs it is a grave ques. tion whether the action in any view can be maintl\ined. Apparently, there is but one answer to the question: Clln one who does. not hold the legal :title to a patent treat as an infringer one does hold that title? However, as both parties have devoted the greater part of their argument to a consideration of the construction to be placed on the assignment, I proceed to an examination of the question whether that instrument trans., ferred a valid title to the defendant. Prior to 1881 the hat-sweat industry was in the hands of several rival manUfacturers, viz., the complainant, Stetson, Greenwood, Bigelow and the Blanchard Overseam Company. Competition W88 to all. An eliort was, therefore, made to consolidate these conflicting interests. With this object in view an agreement was entered into between the complainant and Mr. John B. Stetson, which, after reciting that the. complainant had assigned certain patents to Heury B. Renwick, 88 trustee· for a oompanyabout to be formed, provides 88 follows: Stetson was to organize the com pany. the patents were to be assigned by to the new company upon the joint request of the attorneys for the respective parties, 37 per cent. of the capital stock of the new company was to be delivered to complainant. It was agreed fut:ther that the board of directors of the company was to consist of five, two of theUl to. be designated by complainant, who was to. be employed as general of the manufacturing department. He was to devote bis entire t()the business and was to receive a salary of 86,000 per annum, payable monthly. It was also stipulated that the patents assigned ,by to the company should not be assigned, sold or traosferreQ. by the company, except upon the written consent of complainant, so long 88 .he continued to own two-thirds of the 371 per cent. of stock. Com. plainant further agreed that as soon as the company was formed Rnd the pElr, cent. of.stock issued and delivered to him, he would
3n
924'
FEDERAL REPORTER,
voL 49.'
neously transfer,tothe company hie entire busineas,'both of manufacturing and selling' sweats for hats; by complainant to Ren,,: wick, as trustee for the Hat-Sweat Company about to be formed, waS executed at the'Mule time and provided that Renwick patents therein mentioned "to thewd company when formed, orits soon thereafter as he may be requested' Sd to do; the terms and conditions C()ntained in lln artic1e of agreement bearing even date herewith (Stetson agreement)b'aVirig,firllt been fully eomplied with, otherwise this assignment robe void;!' The assignment to Renwick as trustee contains also the following , ' 1 , clause: ..i'ild r db' furth'er covenant aDd agree that as as the,sirldcompany shallhave been duly organized, if requested, I will execute an assignment, 8ssigningand transferring aUmy:'rigbt, title and interest in and' to the said several letters patent, and each of'ithetn, and said application above 'named, to theqompany direct, altclaims for past infringement of the said or any likewise any and all existing contra,eta and licenses under the said several letters patent 8n'd amount due " , thereon. .. 1
!twill be observed that the assignment in dispute-March, 1882,-is in elltact compliance with 'the foregoing stipulation. On th,e 3d day of January, 18'82, the complaillant signed a full and absolute release,:irtdorsed on the Stetson agreement,· acknowledging that Stetson"has faithfUlly cotnpliedwith and carried out each and every of the terms and ®naitions of the said agreement." On the Ilame day the company, by resolution of the board reciting and confirming the Stetson agreenilmt, employed the complainant as general tpal1ager at a salary of $6,000 per annutfi'i,payable monthly. Mr. Renwick did,not accept the absolutely declined .in the spring of 1882 does not appear. Indead,ltseems reasonably clear that bothpai'tiesexpected that he'might be':induced to accepfeven long after this period. Howbe,the fact remains that Renwick had nothing to do with thetraneaction f1'6m its inception to its close. What,then was 'the situation in March, 1882? The Hat-Sweat Com;' pany been· organized, aU the .parties having transferred· and assigned theirp'1'operty antl' patents to the company as agreed. Thecomplainant hadJ.ieceivedhisstock, had beenappiJinted general manager at the agreed sa]liry, had transferred his business, apparently without condition, to thi:loompany, and had received over $8,000 for his plant. In short, every (loljditlon precedent had been' performed. Everything that Stetson, or company, adopting hisagreement,promised to do as a consideration' for the aSsignment hl;ld been done. This is virtually conceded. Why; then,' should the complaillS.t1tnot have assigned 'the patents? WhyshOtild 'henot have kept his agreement? It is admitted·that he should have assigned; but it is argued tbat tbe assignment should have oontained's c'ondiW:lD', in htec1Jerba,· making it voidutiless the com pany, throu'gh the reIiltiitliier of complainant's life, compliedwitb the terms Clf'the StetsoDagreeinent and employed him as general manager. Or
BRACHER:
HAT-SWEAT MANU:F'G 00.
925
on the part of the company that they would comply with the executory terms of the Stetson agreement, or a separate stipulation should have been executed on the part of the company agreeing to carry out the terms of thatagreetnent. In other'words, it is insisted that a valid title to the patents was conditionalupoll,the continued employment of the complainant, and that an assignment which did not convey such a defeaaible title was in violation of null and void, and transferred no title to the defend... ant. Tbere is nothing in the negotiations from the beginning to the end to indicate that if. was everin the mind of either party that such a conditionshouldbe attached to the assignment. A recital in an assignmentofs. patent of a memorandum of reciprocalobligatioDs, like that contained in the Stetson contract, would have been out of place. The idea never appears to have assumed a tangible shape until, in 1887, the complainant was seekillg a plausible theory upon .which to attack the defendant. ,He agreed to assign without condition. He did assign without condition, and a short lime afterwards directed the trustee to assign ,without condition. ,Can it be possible that the complainantwould have sanctioned the unconditional direction of May 23d if he intended that Mr. Renwick should add a condition regarding his employment based upon the Stetson agreement? Would he have used the following language: "You are' hereby requested to assign, transfer and set over unto the Hat. Sweat ManufactUring Company,1ihe property conveyed to you by the assign... ment from 'rhoma,s W. Bracher to Henry B. Renwick and now held in trust by you fur them and on behalf of said company. This request is made in accordance, with a certain agreement between Thomas W. Bracher and Jobn B. Stetson, dated June, 1881, each of the terms and conditions contained in said ail'r,eement having been fully complied with."
it is said" the trustee might have inserted. in the assignment a covenant
I am convinced that such an anomalous assignment was not intended and that the defendant could not have been compelled to accept it. It would have been valueless. No one would have purchased patents veyed, by such a title. The other parties would not have transferred their patents by absolute aasignment and permitted the complainant to occupy a relation t9 the company which would enable him at any time to destroy the company's property and turn its title deeds to ashes. And, finally, the others would never have transferred to the complainant 2,250 shares of stock in exchange for such an infirm and worthless title. It seems incredible that intelligent men could have intended to organize a successful company with the title to its property dependent upon its succeeding should a dispute arise between it and one of its servants over the terms of his employment. After the complainant had received the stipulated consideration it was his duty to do what he had agreed to do and what he had been paid for doing, viz., transfer his pat. ents to the company. If, thereafter, he was improperly discharged he had his remedy at law, which he could at any time assert. It was manifestly the intention of the parties that if there was a breach of any of
926
,(n nnERAL REPORTER,
49.
'H
the left to their rein· edyat law. , >11,'/,,:-, _ . . ! ' Considerable has . been indulged in" 'on' ,the briefs, ',as to the fate of the':lten""icmtfllstjetQ. I do) not ,deem it' to en'" tel' into this interesting inquiry, for it must be bome; 'inmi:nd that the questionoElfeds ,rrot('f'ihether the'defendant has a:perfect title, but whether the' complainant has a title which will en8'ble ' im to infringers. IiIavibgj;fora good consideration, twice 'Qasigned all title out ·of: ·himself: 'itt is :ncit'easy t08e8 by' what ntysteri0ulfprocess heaequir«l it again. > Thei,purpose of the, Renwick trust""as' obvious.· It Walt to hold the: pl1tentsfor the benefit of all, pendingi the formation of t};uFcompany. The moment the company was formed and the ,consid· erationpaid the trust-deed was unnecessary. It would have been more orderly, certainly, to ,have had the trust 'executed. :. But the defendant was gUilty of no wrong. in demanding an assignment::direct from the cotllplainant. The latter had been fully paid fortheiB88ignment and !wi-agreed to make·it.' " , . If the foregoing views are correct the question whether ithe complainl111towl18 rightfully discharged or not is ofna materi'aUty to this controversy.' t .All the contemporaneous agreements, everything that was said, done by the parties1rom the beginning to the end of the transaction only tend ,to strengthen the impression that it was the inten· tion of all concerned that after the transfer of the stock and the employm.ent,l>-f. the complainaJ1t. by the defendant, their thereafter should be the ordinary ones of employer Ind employe. I ,If the complainant failed'to keep his agreement the defendant could recover damages, but stock to him. If, on other hand, the deitsa,grQemeJ;it the complainant could recover damages of the defendant, but not transferred ',Each party had his remedy at law if the other failed to keep the agreement. The com· plainant's conduct since his discharge'lleed be referred'to only as contirmatoryof thiscoDstruction,and as it tends to throw light upon the actual Intent of the parties. After his disoharge in 'September, 1832, he made no sign until this suit was commenced in 1881. Why did he not immediately offer to r.eturn his stook and demand his patents? The gives for thus sleeping upon his rights is.wholly inadequate. If the situation was then what he now says he supposed it to be, his inactivity is unaccountable. If a defeasible assignmentJwaB on record and the event which reinvested him with the title hadoOOulTed, why did he 110t 88sert his rights and reclaim his property? Instead of doing so he sold his stock for 860,000 arid still retains the money. The ;bill· is dismissed. l
'927'
,.,.,,'
I.DJllltGW PA.'I'JIlft8-ANTIOIPATION-GLA,88 BOTTLBB AND JA.B8. of,
DeBifPl.tJ&tent No. iBSUed 18S'1 to.DanielO. Ripley, for footed bot'ties, an,d, 3'ita, consisting ,',il. ssphS,riCa!, b,ody, a ,Ag;red, ','ring-n"eck, covering a zone 01 l,tI! a, " b<!4Yt 6pd hav\ng ... rai8ed patta"rn on [ts entire surface, was not, anticipated by des:gn8 havtnlf A general l'68/ilJI1blance thereto In aliape,buUaolrlng ,the ral86d omawentation ,lif the" neck. ', , ' '
L8.uol";;'lkJPBNOB,-MBTIlOJ> OJ' hODUC11iG.
autt, not inV91n tbe method of produclng the result, yet,lD aODslderfiigtbe gnestion'Of anticipatiot!.. tbe' com mll.y properly take Into cotlald, , t,,iOU,', "th,':"',,' tact. that the paten,tee invented tbe metbod: of making articles of ilaas-, wat:e ba'iJ).g a 14blown"'bQdy and a 14 pressed "neok, thereby rendering possible tbe raised' omamentation oUbe neck in the patent. " ,, l.8.ufll-CoNSTRUOTION-INTBRPRBT,,:TtoN OJ' WOUs. " ' Tb,e,wIIl'da of tb!! clailI1 a,tld specUicatlons,wbi9hretel' to the body'of theV8llSel '" '-globe-i1baped" or "spberical"n'lust be taken ,in tbeir ordinary. ratber than tbeir m8.tbematibal,'slgnlficatiOn, and infringement cannot't18 avoided by mel'elyelong'8.\to, o:vQid, ratber tban a !lpbere or globe. , ' , ',' In determining wbetber adeliign patent is infringed, the test Ii whetbertbere ta similarityiti appeara.uee; not to the eye of the expert, but.to tba.t of 'theC1r9lnl'l'Y obseryer,gl:ving suob attention as would ordinarily be given by a put: ohaRii" of'tbe article beirlng'tbedealgn. . ., OJ'INPBINGBMBN'l'-GBNBBAL
I. 8.ud-PKNALTY. , ;W,' court
"1887.. '
tbe of, patent Is deliberate and ...t ll. impoae upon tbe detelldant tbepena!ty of t2IiO provided for by Act Eltb.
:"
'
InEquity.
Suit by DaQielO."Ripley against the Elson Glass Com-
pany foJ;' infringerpent of a patent. Decree' for complainant. W. ' Sontand T.· B.' Kerr I for complainant. F.L. Dyer. and J. D. El8on" for respondent. JACKSON. Circuit Judge. 'Thill suit is, brought for the alleged infrinp ment of design patent No. 17,243, issued April 5, 1887. to DanielO. Ripley, tbecomplainant, "for anew and original design for glass bottles and referring to Figs. 1 and 2 of the accompanying dtawmgs,tlie specificatio1l8state that..... :. : . feature ofroy design consist$ oUbe globe-shaped body. II. andflgufearing or neck portion, a, surmounted on a zone of the spherical ·body,.b. ' ::Theftgured portion consilsts of a raised pattern. covering the, whole a; but the he/lds, fl. lJlay omitted, as shown iuFigure $,ThebQl1y,b, bas a foot, c. A lIuitable Is used with some witb others it ,is not., ,Ittherefore is no,t 'to be considered necessary 'to Is applicable to bottles. jars. pitchers. and aimilar footed
artldl..... ,.,
""
.' ;",Tlle
'The, ,ffrst claim based. thereon ,is as follows:
for footed llI>ttles and jars, consisting of the spherical body. II; 'IIr,,ed, J,',ing-neck. a, cover,iOl{a zone of the body, t!; the ring baving a ' its entire surface. as shown ."JnMngement is charged only as to this first claim of the patent. The <cJ*D$e$;8(lt up by, respondent .in its answer are,: ,Firllt, invalidity oithe