ROUTH· ·fl. BOYD.
defense to the trespass upon it, unless it was removed or destroyed in, the suppression of a nuisance, that it was used in carrying on the unlawful occupation. Ely v. Supervi8ors, 36 N. Y. 297. The demurrer is sustained.
(Oircuit Court, D. Indiana. July 11, 1892.)
Letters patent were granted for a new improvement in school desks. The patentees formed a copartnership for its manufacture and sale, which, becoming involved in debt, was dissolved. 'The plant and manufactory were transferred to one of the firm, who agreed to carry on business and payoff the indebt,ectnea,s, and relieve the other member from all. liability for the firm's debts. A deed for the plant was executed by the retiring- member and placed in escrow, to be delivered on the performance of the condition. There was no mention of, the letters patent in the deed or agreement. Held, that the right to manufacture and sell the patented improvement continued so long as the condition wascomplled with, and the custodian of the deed had a right to deliver it upon full performance of ,the condition. "
FEDRRAL JURISDICTJON-BREACk OJ!' CONTRACT AS TO PATENTS.
J!'OR lliIVENTIONS-ASBJGN"MENT AND LICENSE.
Where the right to manufacture and sell a CE>rtain patented improvement was dependent on the performance of a condition contained in the agreement of tranllfer, the question of the breach of the condition must be first settled in favor of plaintiff before the federal courts can have jurisdiction of an action to recover ages for the unauthorized manufacture and sale of the articles.
At Law. Action by James R. Routh against Rader J. Boyd and ,others. Heard on demurrer to the complaint. Demurrer sustained. Julian & Julian, for complainant. Montgomery Marsh and T. S. Rollins, for defendants.
BAKER, District Judge. The question in this case arises on a demurrer to each paragraph of the complf1int alleging that the court has no jurisdiction of the subject-matter. The complaint is in two paragraphs, which differ in no important particular. The parties to this action reside in this state, and the jurisdiction of the court depends on the question whp,ther the cause of action is one which arises under the constitution and laws of the United States, or the treaties thereof. If the action is one to recover damages for the unauthorized manufacture and sale of articles whose manufacture and sale have been secured to the plaintiff by letters patent, then this court has jurisdiction; otherwise it has not. The agreement, which is madfl a part of each paragraph of the complaint, shows that Teal and Puterbaugh were granted letters patent for anew and useful improvement in school desks; that they formed a copartnership, erected a manufactory, and began to manufac:tu,reand sell the improvement in school desks at Greenfield, Hancock
after carryirig;on,the business for some time, they involved in debt; thai thereupon they dissolved their copartnership, and the maliu faCtory $ml other property, which had been used in the business, were transferred to Puterbaugh; that it was agreed ",.hat he should carryon the and payoff the debts of the firm, and release Teal from all liability on account thereof; that to carry out this agreement a deed of conveyance of the plant was executed by Teal and wit'e to Puterbaugh, and was placed in escrow with one Boyd, to be delivered by him to Puterbaugh on his performance of the conditions contained. in the agreement of dissolution; that Puterbaugh took possession ofthe manufactory, audproceeded to carryon the business for a period of time; that the custodian of the deed delivered the same to Puterbau/l:h on the assumption that he had performed the conditions which entitled him to the deed ; that Puterbaugh afterwards conveyed the manufactory to the defendants, Boyel and Hinchman, who for the past nine have been operating the factory and manufacturing and sellnor in ing the improvement in school desks. Neither in the the tht>reany mention of the letters patent; nor is there, in terms, anY";fant at t'laid letters patent, nor any license to use the improvement secured thereby· Facts are stated in each paragraph of the com plaint, in various forms and at great length. to show that Puterhaugh did not perlhtrri1lill part of the agreement; that he got possession of the deed without and that, by his fraudulent and wrongful conduct, he lost whateverng'ht had been secured to him by the contract. It is also allegeil, beCause there was noreftJrence to the letters in the agreement or deed, that he never acquired allY right. fiS against Teal or his patented impl'over11ent in school desks heirs, to manu:ncture without an . .. ' ..' It is arp:ued by counsel for plaintiff thht these fuds show that Puterliaugh 'never acquired manufa,cture or sell the patented illlprovemmt in school desks, or, if he did, that his right to lioso only continued so long as he should perform his part of the agrcPlllent. Consequently it is insisted that he could not, as against Teal Rnd his heira. grllnttothe defendants, Boyd and Hint·hmun. the exclusive righttomanufu<.lture and sell the patentPd improvement in school desks. When the plant 'was turned over to PuterLaugh all the agreement that heshoull1 carry it on and payoff the firm dehts" the right to manUfacture 'the improvement in school desks passed to him jm:t as effectually as though secured by apt words of Whoever grants a:thing<issupposed;also tacitly to grant thatwithont which the grant itl;plfwould be of no efft'et. Cwicunque quid conceditconcedere videht1'et id sirtd·q'll.o res'ipiae88e non potuit. Liford's (rase, 11 Co. 52. The 11lwentel!8ils a silent factor into every agreement. Stipulations which the law imports inton contract become as effActuallya part of the contract as·thQUghtheywere expressly written therein. Long v. Straus, 107 Il1c:J.94r6'N. E. lWp.123, and 7N. E. Rep. 763. In the absence of frnud, a<.t.cllient, or, mistake, stipulations thus imported into a contract cannot he averment or proof. SnDw v. :Railway Co., 109 Ind.
nOUTH V. BOYD.
422, 9 N. E. Rep. 702. Every averment in the complaint variant from the legal effect of the agreement is without force. It follows t,hat the characterof the complaint must be determined from the express and implied stipulations of the contract. The -conveyed to Puterbaugh, by necessary implication, the right to manufacture and sell the patented improvement in sehool flesks so long as he complied with the conditions of the contract. It also gave the custodian of tbe deed the right to deliver the same to Puterbaugh upon his performance of the contract. It is shown, with great prolixity of averment, that Puterbaugh failed to perform the contraet, and that his rights there· under ceased, and the rights of Teal reverted to him or his heirs, and that the delivery of the deed by Boyd was unauthorized and wrongful. The pleader deduces as 8 conclusion from these premises that the de· fendants, Boyd and Hinchman, are infringing the patent in manllllrcturing the patented improvement in school desks. But whether they are invading the. rights, of the plaintiff' depends on the question whetht'r the -conditions of the. agreement have been performed or not. If Puterbaugh or his assigns have fully performed all the conditions of the agreement, then they are entitled to the deed for the plant, and they have the right to manu1ilCture theimprovement in school desks in their factory. The primary and controlling question involved in each paragraph 01 the complaint is whetherthe agreement has been performed or violated. If it has been performed, the plaintiff has no cause of actiQn. If it has been violated, he has a cause of action lor its breach, and may recover aU proximate damagE)s arising therelrom. Among the elements of damage would be that arising fi'om the unauthorized manullwture of the pat. ented im provement in school desks. The cause of action set out in each paragraphofthe complaint is for the recovery of damages growing out -of the breach of this agreement. What is tlaid about the infringement. of the patent is incidental, and has no force until the question of the breach .ofthe agreement is first settled in lavor of the plaintiff. As each paragraph onhe complaint exhibits a cause of action for the reco\"ery of damages growing out of the breach of the agreement, it follows that the -court has no jurisdiction of the subject-matter. The demurrer is sustainedto each paragraph of the complaint,with leave to plaintiff to .amend. .
PATlIlNTS'joB!NVENTIONS-INFRINGE:M.il:NT-PACKERS FOR OIL WELLS.
:w patent No. 167,4llO, issued: September 7,1875, to James P. Gordon, for an impro;vement in packers for ahutting oj! water from oil wells, consisting- of (1) a tnbUlar'cMing, (2) an eX);lansible packer, and cone for expanding it. and (8) a 0,t",e,lips 0,1' wedge arm,s, and a wedge '00, ne ,to force the a,rm,.s against the wall of the weg; to form a resistance base to the packer, so th.at when the casing is moved lengthWise tlle cone within the packer will expand it, the third element is novel, oo41a ."he ,basis of the entirtj device, and the patent is by a device making uSE! :Q:f "ame idea by niech,auical eqUivalents, their P'dsltion merely being reversed, 'although 'in suoh device' the wedge arms, besides' serving to place the pacjl;Qri!l·position, as in the combination patented, havo t1:le,additional function of in the casing.' .
IuE:qqity. for infiingementof patent.'Heard on pleadings and proofs. . :Qe9ree for com plainant. W. ll(ikewell for compla.nant. D. F.'fatter8O'n, for defendant. ',' '. Circuit Judge, 'and BUFFINGTON,'District Judge.
BUFFJ;NqTQN, District Judge. "This bill. is filed by Benjamin MasJames P. against George:ralm, for alleged infriugeQleptpf patent No. 167,400" flilsued 7, 1875, for an improvement in packers in shutting off water from oil wells. In drilling such of salt water are met at great depth,\vhich must be shut off, or the, be ruined., 'Before the patent iIi' suit this was done by running an .iron pipe called "QRsiQg,l' froIl) the surface, to a point below the salt-water, vein. Here it reste4 on the bottom of'the well, and by lDeans of !'i\-cker kept the out. From that point a hole of smaller diameter was drilled, until the oil was reached. Inside the casas well, was placed a smaller ing, and (rWll,its lower end to the string of pipe, called" tubing," through which the oil was pumped to the surface. As .these veins of salt water ,vere found at considerable expense. To avoid this, Gordon, depth, the casing was a the patentee, conceived the novel idea of using only sufficient casing to span the water veins, placing at each end a packer, to prevent thewater escaping either up or down; and thus effectually shut off the water in a jacket, closed at both ends, and suspended and self-sustaining, hundreds of feet below the surface. This was called a "double packer." The idea was novel, and was a radical departure from former methods. Being a pioneer, and not a mere improver, Gordon's claims must be given a liberal construction. Sewing-Machine 00. v. Lanca8ter, 129 U. S. 278, 9 Sup. Ot. Rep. 299. Gordon's patent shows how he accomplished this result: "Having prepared the necessary length of casing, C, I screw onto the top. and bottom of it the cones, C', CII, both of them having their bases down-