KEARNEY fl. I,EHIGH VAL. R. CO.
allow to her interest upon the gross sum at 7 per cent. from September 29, 1885. I have drawn forms of verdict, gentlemen, which I will allow you to take; and if you find for the plaintiff, we will ssk you to state which of these claims you find are infringed. You understand that if you find all these three claims, or either of them, infringed, then your verdict must be for the plaintiff. If you find that neither of the claims is infringed, your verdict will be for the defendant; and the court will ask you to state in your verdict, in the manner indicated in the form of verdict which the court will hand to you, what you find as to infringement of the claims. Verdict finding infringement of each of the three claims in sui··
KEARNEY and another v.
VAL. R. Co.1
(Circuit Oourt, D. New Jer8ey. June 3, 188!t)
PATENTS FOR INvBNTIONS-INFRINGEMENT-PARTmS-PLEADING-EsTOPPEL,
To support a plea in abatement for non-joinder of parties in a suit for infringement of a patent,. defendant offered in evidence a written certificate given by plaintiffs to a third person, and reciting that such person had "onethird equal interest with ourselves in the said patent. to Defendant urged plaintiffs were estopped from showing by parol that the writing did not state the agreement and intention of the parties. Held, that this was not a case for the invocation of the doctrine of estoppel.
The bill of complaint in this case was illed March 15, 1883, by plaintiffs, claiming to be the sale owners of the patent sued on and all rights under it. On May 10th following, defendant procured an assignment of the patent and a release of infringement claims from one who claimed an interest. Held, ,that defendant was a purchaser with notice, and was subject to all the equities that could be invoked against its assignor. A certificate ?iven by patentees, which recited that the party to whom it. was given had 'one-thIrd equal interest with ourselves in the said patent,"
ing that it was not intended by the parties giving it to operate as an assignment.
held not an assignment of the patent, or any part thereof; the evidence show-
Andrew McOallum, for complainants. Elwood G. Harris, for defendants.
NIXON, J. The bill of complaint was filed in this case by Francis Kearney and Mary F. 'l'ronson, as executrix of Luke F. Tronson, deceased, against the defendant corporation, for an injunction, and for the recovery of profits and damages for the alleged infringement of reissued letters patent No. 5,184, for new and useful "improvements in spark arresters for locomotives." The defendant has put in a plea in abatement of the suit, for the non-joinder of parties, alleging that·
C. Linthicum, Esq., afthe Chicago bar.
at the tiIlle of the commencement of the action, and prior thereto, the complainants were not the sale and exclusive owners of said letpatent, and that one John H. Immer, of Newark, New Jersey, had an equal nndivided one-third interest therein. In support of the plea the defendants offered in evidence the following written certificate, executed on the day of its date, duly received for record, July 2, 1873, and recorded in Liber V. 16, p. 289, of Transfers of Patents:
"To whom it may concern: This certifies that J olm H. Immel' is fully authorized and empowered to make any contract with the Central Railroad of New Jersey, that may be binding on our part, for the sale of the patent-right on. spark arrester, as secured to us by letters patent 113,528, dated April 11. 1871, and reissue 5,184, dated December 10, 1872, he having one-third equal interest with ourselves in the said patent. "F. KEARNEY. [Signed] "LUKE F. 'fRONSON. "Newark, April 10, 1873."
The counsel for the defendant insists that the paper constitutes an equitable assignment of the one-third ownership in the reissue; that it is a writing free from all ambiguity; and that the complainants are estopped from showing by parol such was not the agreement and intention of the parties. But it does not see'lll. to be a case for the invocation of the doctrine of estoppel.. The facts are substantially as follows: Kearney and Transon obtained the original letters patent on April 11, 1871, for a new improvement in spark-arresters; and, being desirous of btinging the invention into general use on the railroads of the United States, they entered into an agreement with one John H. Immel' on April 5, 1872, in which they constituted him their sole agent to sell patent-rights for the period of one year, at the rate of $50 for the use of said improvement upon each engine to which it should be applied; and they further agreed that Immel' should be authorized to retain 25 per cent. of all moneys received by him in said sales, for his full and complete compensation, and should pay to the patentees the remaining 75 per cent. During the continuance of this contract the parties came to the conclusion that the claims of the patent were not broad enough to fully cover the invention, and a surrender and reissue was deemed necessary. The patentees not having the means to pay the required fees, it was agreed that Immel' should have his rate of compensation changed from 25 per cent. to 33t per cent. of the proceeds of the sales of patent-rights, on the condition that he should pay the costs of the reissue. The reissue was obtained on December 10,1872, and he made the necessary payment of fees; but no change was formally introduced into the Wl'ltten agreement. It expired April 5, 1873. A few days afterwards Immel' called upon Kearney with the above paper or certificate, stating that he wanted authority to settle the ciaim for infringement wh;ch they had against the New Jersey Central road, and that he had drawn the paper to show to the officers of the road that he was authorized to make the settlement, and at the same ti!?-e to express the
KEARNEY V. LEHIGH VAL. R. CO.
new arrangement as to his compensation, which had been agreed to. With this explanation of its meaning, Kearney and Tronson signed the certifica.te, and there is no evidence that Immel' ever gave any other construction to it, or made any claim to ownership in the patent, until after this suit was brought, unless the assignment of the onethird of said patent by Immel' to one Annan on April 28, 1874, and the reassignment of the same by Annan to Immel' on June 23, 1875, · be construed to indicate such claim. The bill of complaint in this cause was filed March 15, 1883, by Kearney and the executrix of Luke F. Tronson, claiming to be the sole and exclusive owners of the patent. It was after this date that any notice came to the defendant that Immel' set up any claim to ownership in the patent. On May 10, 1883, he assigned to the defendant corporation all the right to the reissue, and added a special release and discharge for all claims for damages for any prior infringement. The defendant, therefore, was a purchaser with notice that complainants denied the claim of Immel' to ownership in the letters patent, and it is subject to all the defenses that could be set up against Immel' himself. The certificate was not an assignment of the patent, or the part thereof; and, judging from its form, it was not intended by the parties to be so regarded. Whether its use should be limited to the settlement of the claim against the New Jersey Railroad it is not necessary to determine, although that seems to be its fair import. It is clearly competent, however, for the complainants to set up the same defense against the claim of ownership by the defendant corporation as they could have set up against Immer; and the testimony satisfies me that, when the patentees signed the certificate, they understood the scope and meaning of the paper to be that Immel' should be entitled to receive the one-third, instead of the one-fourth, as before, of the money realized on the sale of patent-rights. This construction of the certificate does not invest Immer or his assignee with any title, legal or equitable, in the patent itself. It simply determines the rate of compensation to which he was entitled on sales of patent-rights. I am aware that the phraseology used is capable of different construction; but I regard any other construction as aiding Immel' in his attempt, by deception, to get more than the patentees intended he should have. There must be a decree in favor of the complainants, on the plea.