HAl'rIMACHER V. WILSON.
upon the theory that the parties, if aware of any usage or custom reo lating to the subject-matter of their negotiations, have so expressed their intention as to take the contract out of the operation of any rules established by mere usage or custom. Of course, if the plaintiffs were forbidden to keep this article by the terms of the policy, they cannot bring in a custom or usage as avoiding that prohibit:on of the policy. If there is any such custom, it cannot prevail against the express language of the policy; and if there was such a custom it could not relate to the quantity which was shown to have been kept on the premises. It was testified by the clerk that there was 400 pounds. Mr. Fulton testified that Mr. Sperry stated that there was 700 pounds. Mr. Sperry, when his at· tention was called to it, conceded that he had said something about dynamite, but did not admit that he had said it would avoid the pol. icy; but he said nothing as to the quantity, apparently admitting that there may have been 700 pounds. 'I'he keeping of such a quan. tity of so dangerous a s.ubstanee in such a place as that was are· markable act of carelessness. It was dangerous to the whole com. munity to have such stuff as that, in such quantity, in a store where people are passing and repassing, and going in and out of the store to trade. I think plaintiffs are not entitled to recover. The judgment will be for defendant.
and others v.
«(Jircuit (Jourt, D. Massachuaetta. January, 1886.)
PATENTS FOR INVENTIONS-LICENSE-JURISDICTION OF FEDERAL COURTS TO ENFORCE OR FORFEIT.
It is undoubtedly the rule that where there appears tO"be a subsisting license between the complainant and the respondent, the jurisdiction of the court, under the patent law, will not be extended to cover a suit to enforce or forfeit the license on the ground that the terms thereof have been violated; citing Hartell v. Tilghman, 99 U. S. 547.
SAME-JURISDICTION TO DETERMINE WHETHER THERE IS A LICENSE.
But where a suit is brought for infringement. and the existence of a license is alleged by the respondent and denied by the complainant, it Lcolllpetent for the court to determine whether, at the time of the filing of the bill, there was a subsisting license between the parties. Defendant failed to pay royalties, and thereupon complainant served notice of termination of the license, in the mantier provided by its terms, and after· wards filed his bill for infringement. Defendant sought to excuse his failure to pay royalties on the ground that he could not ascertain where the owner of the patent was when they fell due, offered to pay any sums due under the license. and urged that it ought not to be forfeIted. Held, that the question to be decided was not whether the license should be declared forfeited, but had already been forfeited by the acts of the parties pursuant to Its provIsIons. ·
by Charles C. Linthicum, Esq., ,of the Chicago bar.
FAILURE TO PAY ROYALTIEs-TERMINATION OF LICENSE.
SAlfE-AGREEMENT FOR FORFEITURE.
An as-reement that, upon failure of a party to a license to his covenant, It may be forfeited by a written notice served on hIm, is valid, and may be enforced. White v. Lee, 3 Fed. Rep. 222, 4 Fed. Rep. 916, and 14 Fed. Rep. 789. When a license is terminated by service of notice in accordance with its provisions, it ceases thereupon to protect the licensee, and a bill against him for infringement will lie.
SAME-EFFECT OF FORFEITURE.
In Equity. Dani.el C. Linscott, for complainants. Ira D. Van Duzee, for reRpondent. Heard by COLT and 'CARPENTt<;R, JJ. . CARPENTER, J. This is a bill charging infringement of letters patent No. 169,931, granted November 16, 1875, to William F. Ulman, for an improvement in piano-forte pedals. The respondent admits the validity of the patent, and the infringement, but justifies under a. license made to him June 1, 1877, by Jacob Ulman, who was then the owner of the letters patent. The complainants reply that the license was revoked and canceled August 13, 1880, by William F. Ulman, who was then the owner of the letters patent, in accordance with the provisions of the license, and on account of failure by respondent to perform his covenants contained therein. This being the state of the controversy, the. respondent denies the jurisdiction of the court. He points out that the question whether or not the license has been forfeited is a question arising under the license itself, and not under the patent law, and that this question must be determined for the complainants before it can be determined that he unlawfully infringes the patent; and he claims that this court has no jurisdiction to try that question in a suit for infringement. We find no authority to support this position. It is undoubtedly the rule that where there appears to be a subsisting license between the complainant and the respondent, the jurisdiction of the court, under the patent law, will not be extended to cover a suit to enforce the terms of the license, or to forfeit the license, on the ground that the terms thereof have been violated. Hartell v. Tilghman, 99 U. S. 547. But we think that where a suit is brought for infringement, and the existence of a license is alleged by the respondent, and denied by the complainant, it is competent for the court to determine whether, at the time of the filing of the bill, there was a subsisting license between the parties. The conrt, in Hartell v. Tilghman, found as a fact that there was a subsisting license, and on that ground dismissed the bill. The same rule has been followed in other cases. Cohn v. Nrltional Rubber Co., 15 O. G. 829; Kelly v. Porter, 17 Fed. Rep. 519; White v. Lee, 3 Fed. Rep. 222, 4 Fed. Rep. 916, and 14 Fed. Rep. 789. We proceed, therefore, to consider whether there was a subsisting license between the parties at the date of the filing of this bill. The license contains the following provisions:
.. Fourth. The said E. Wilson & Co. agree to pay said Ulman, his r3presentatives or assigns, 6 per cent., in money, of the amount of sales during the first four years of said term, and tif per cent., in money, of the amount of sales during the remainder of said term, such payments to be made on the days the accounts of sales are rendered, to-wit: On the first days of January, April, July, and OctolJer in each year, and on the last day of the term; but the said E. Wilson & Co. shall not be required to make any return or payment for the time preVious to October 1, 1877." "Eighth. Upon a failure of either party to perform any of its engagements here entered into, either party, the representatives or assigns of said Ulman, may terminate this agreement by serving a written notice upon the delinquent. but neither party shall thereby be discharged from any liability it may be under to the other, to the said Forbes, the representatives or assigns of said Ulman or Forbes."
The complainants allege that the respondent failed to comply with the terms of the fourth clause, by neglecting and refusing to pay the royalties due in October, 1879, and in January, April, and July, 1880; and that thereupon the license was terminated by written notice, dated Angust 13, 1880, and served on the respondent. The respondent admits that he failed to pay the royalties at the times provided, and has never paid them; but he alleges that the reason of Buch failure was that he was unable to ascertain where the owner of the patent was, and that William F. Ulman, the then owner' of the patent, had agreed to call on him for such payment, and that he neglected to do so. Much testimony has been taken on these points. The witnesses are in direct conflict in very many particulars, and the questions in dispute have been very carefully and ingeniously argued by counsel. We shall not detail the evidence offered by the parties on these questions. It is sufficient" to say that we do not think the respondent has proved that there was any excuse for his failure to perform his contract. On the contrary, we think the evidence shows that, for reasons which seemed sufficient to him at the time, he deliberately determined not to make the payments required by the license. It is true that he has since offered to pay the sums due, and he strenuously contends that his license ought not to be forfeited for mere neglect to pay money, since he now offers to pay whatever may be due. Undoubtedly his argument would be very strong if this were an action to ascertain and declare a forfeiture. The question, however, which we have to decide is not whether we shall now declare the license forfeited, but whether it has already been forfeited by the acts of the parties, pursuant to the provisions contained therein. The respondent agreed that if he failed to perform his engagements, the license might be forfeited by a written notice served on him. We see no reason why such an agreement may not be made and enforced. White v. Lee, 8UpTa. He has failed to perform his engagements, the notice has been Rerved on him, and we think, on the sel'Vice of that notice, the license ceaBed to protect the respondent. There will be a decree for an injunction and an acconnt aB prayed. v.26F.no.4-16
and others. 1
January 18, 1886.)
«(Jircuit (Jourt, N.
n. NfJUJ York.
PATENTS FOR INVENTIONS-VOID REISSUE.
On rehearing, the decision of the court in this case (28 Fed. Rep. 891) reaffirmed, and held, that the claims of letters patent reissue No. 8,615, to William B. Fisher, for improvement in methods and apparatus for treating seeds, are unduly expanded, and are therefore void. It does not aid the complainant to show that a claim has been narrowed at one end, when it is apparent that it has been doubly expanded at the other.
SAME-NEW ELEMENT INSERTED .AND CLAIM EXPANDED.
It would tend to great confusion and uncertainty in the administration of the law, if a conclusion, reached after mature diliberation, should, upon the same facts, and a repetition of the same arguments, be set aside and reversed by the same tribunal that rendered it.
Petition for Rehearing. John Dane, Jr., for complainant. Munday, Evarts c/; Adcock, for defendants. COXE, J. The court rested its decision dismissing the bill in this cause (23 Fed. Rep. t)91) mainly upon the unlawful expansion of the reissue, but also upon the non-infringement of the defendants. Regarding the first claim of the reissue, it was intimated in the opinion that it might be held invalid if construed to cover the use of the apparatus-the mode of operating a machine-the machine being already fully described and claimed. What was said in this regard was intended as a suggestion to 'counsel upon a point not discussed upon the argument. It was by no means the purpose of the court to convey the impression that, upon this proposition, a conclusion had been reached adverse to the complainant. That counsel should have obtained a different impression is entirely natural, for, upon re-reading the opinion, it is obvious that its language is misleading in this respect, and conveys a different impression from what was intended. That the second, third, a,nd fourth claims of the reissue are unduly expanded is so clear that nothing further than a perusal of them is necessary. Place them in juxtaposition with the claims of the original, and there is little room for doubt. The demonstration is complete. No attempt was made in the proof to uphold these claims. The subject was wholly ignored by the complainant's expert To hold them valid now would be to disregard the repeated admonitions of the supreme court upon this subject. Regarding the first, or method, claim, no sufficient reason is advanced why the court should change its decision. It is insisted that the claim is limited by the insertion of an additional feature. Grant it. It does not, however, aid the complainant, to show that it has been narrowed at one end when it is quite apparent that it has been
by Charles C. Linthicum, Esq., of the Chicago bar.