St Paul v. Starling

• Decision Date: 11 May 1891
• Docket Number: PLOW-WORKS
• Citation: 35 L.Ed. 404,140 U.S. 184,11 S.Ct. 803
• Parties: ST. PAUL v. STARLING
• Court: U.S. Supreme Court

140 U.S. 184

11 S.Ct. 803

35 L.Ed. 404

ST. PAUL PLOW-WORKS v. STARLING.

May 11, 1891.

This is an action at law, brought in the circuit court of the United States for the district of Minnesota, by William Starling, a citizen of Nebraska, against the St. Paul Plow-Works, a corporation of Minnesota. The complaint alleges that the plaintiff obtained letters patent of the United States, No. 154,293, issued to him August 18, 1874, for an improvement in sulky plows, of which he was the original and first inventor, and that on the 17th of December, 1877, the following contract in writing was executed and delivered by him and the defendant: 'This indenture, made on this 17th day of December, A. D. 1877, between Wm. S tarling, of the town of Princeton, Bureau Co., Illinois, of the first part, and the St. Paul Plow-Works, of St. Paul, Minnesota, of the second part, witnesseth that the party of the first part does hereby grant to the party of the second part the right to make and sell the Starling sulky plow under patent number 154,293, dated August 18th, 1874, in the following territory, viz.: Wisconsin, Minnesota, Dakota, and all that part of Iowa north of the North-western Railway, and all that territory west and north of above-described territory. In consideration of the above grant the party of the second part agrees to make said sulky plows in a good and workman-like manner, and advertise and sell them in the usual manner, and at a price not to exceed the usual price of this class of implements sold by other manufacturers, and render an account on the first day of January and July of each year of all plows sold prior to those dates on which the royalty has not been paid, and pay to the party of the first part, his heirs or assigns, two and fifty one-hundredths dollars for each and every plow sold, said royalty for spring sales to be paid July 1st and for fall sales January 1st of each year. The party of the first part also grants to the party of the second part the right to make and sell the improvement in whiffletrees under patent 151,804, in consideration of which the party of the second part agrees to pay the party of the first part, at the time of the payment of the royalty for the sulky plows, and in the same manner, the sum of one cent for every pound of said irons used or sold.' The complaint also avers that the defendant has failed to comply with the agreement, has rendered but two accounts to the plaintiff of plows made by it under the contract,—the first one in July, 1878, and the second in January, 1879,—and has never paid to the plaintiff any of the agreed royalty except on the plowsso reported in said accounts; but has made and sold great numbers of said sulky plows since the date of the contract, for which it has never accounted to the plaintiff, nor paid any royalty, a portion of them being made and sold under the name of 'Starling Sulky Plow,' by which name the patented plow was known at the date of the contract, and the greater part whereof were made and sold under the name of 'Star Sulky Plow,' with slight modifications of construction from that of the Starling sulky plow, but which were in fact the plaintiff's said plow, the making and selling whereof was so licensed to the defendant, the defendant falsely alleging the same not to be the plaintiff's said plow, for the purpose of defrauding the plaintiff of his said royalty. The plaintiff claims $10,000 damages.

The defendant filed an answer, which sets up want of novelty in the patent, and want of utility in the invention, and specifies six prior patents as having described the alleged improvements of the plaintiff. It admits the execution of the agreement between the parties, and denies any liability on the part of the defendant. It alleges that it has made and sold a sulky plow under the name of the 'Star Sulky Plow,' constructed on an entirely different principle from that described in and covered by the plaintiff's patent; and that on or about December 5, 1878, it gave to the plaintiff due written notice that the construction of said sulky plow under the plaintiff's patent was unsatisfactory; that a large proportion of those made and sold had been returned to the defendant as unserviceable; and that it would thereafter manufacture a sulky plow of its own design, and renounce its license and all claim of right to construct plows in accordance with the plaintiff's patent, and would construct and sell no more; and that since that date it had not made or sold any plows under said license, or in accordance with the alleged invention of the plaintiff. To this answer there was a reply admitting that about December, 1878, the plaintiff received letters from the defendant, in which the latter stated that it had decided not to continue anu facturing the plaintiff's said plow; but denying that such notice was of any force or effect, and alleging that any difficulty which the defendant had in selling and introducing the plaintiff's plow arose wholly from the failure of the defendant to perform the conditions of the said contract; and denying the other allegations of the answer.

A trial by jury was duly waived, and the case was tried by the court. There appears in the record a statement that on the 8th of February, 1887, 'an opinion was filed in this cause, which said opinion and order pursuant thereto are in the words and figures following, viz.' Then follows a paper which is headed, 'Opinion.' This opinion is reported in 29 Fed. Rep. 790. It contains the following statement: 'After the defendant had manufactured and sold between thirty-five and forty plows under the license, and on or about December 5, 1878, written notice was given the plaintiff that the construction of the sulky plow was unsatisfactory and useless, and many had been returned as unserviceable, and that the defendant would thereafter manufacture a sulky plow of its own design, and renounced its license. The defendant, after the notice, rendered an account up to January 1st, and since then has manufactured about 960 plows, called 'Star Plow,' designed by Berthiaume, and about 350 plows called the 'Harris Plow." The opinion concludes with these words: 'The conclusion is that the plaintiff is entitled to a royalty on 1,310 plows at $2.50 each, making the amount of $3,275, for which sum judgment is ordered.' There is no finding of facts separate from such findings as the opinion contains. The 'order pursuant thereto,' made February 8, 1887, is headed, 'Order pursuant to opinion,' and states that the action was tried by the court, and that the court 'files its written decision and findings in favor of the plaintiff and against the defendant, viz.: 'That the plaintiff is entitled to the royalty on 1,310 plows at $2.50 each, making the amount of $3,275." The order then stays the entry of judgment for 40 days. On the 14th of March, 1887, the defendant filed a motion for a new trial, which was heard by the court, and was denied on the 10th of October, 1887, in an opinion reported in 32 Fed. Rep. 290. On the same day a judgment was entered, which recited that a jury had been duly waived, and the cause had been tried by the court, and the court, on February 8, 1887, had filed its written findings, 'wherein it finds for the plaintiff as follows, to-wit: 'The plaintiff is entitled to a royalty on 1,310 plows at $2.50 each, making the amount of $3,275, for which sum judgment is ordered;" that the entry of judgment pursuant to the findings had been stayed pending the hearing of the defendant's motion for a new trial, and that that motion had been made and denied; and the judgment proceeded to order that the plaintiff recover from the defendant 'the aforesaid sum of $3,275 so found to be due by the court, with interest thereon from the date of said findings, to-wit, February 8, 1887, being $154.10, and all amounting to $3,429.10, besides plaintiff's costs and disbursements herein to be taxed, and that he have execution therefor.' To review this judgment the defendant has brought a writ of error. A motion to dismiss the writ for want of jurisdiction was made at October term, 1887, (127 U. S. 376, 8 Sup. Ct. Rep. 1327,) and was denied, on the ground that the case was one 'touching patent-rights,' under section 699 of the Revised Statutes, and therefore the writ would lie without regard to the sum in dispute.

There is a bill of exceptions, which states that the plaintiff offered in evidence his letters patent, No. 154,293; that it was admitted by the pleadings, proved on the trial, and found to be a fact by the judge, that on or about the 5th of December, 1878, after the defendant had manufactured and sold about 35 or 40 plows under the license, it gave to the plaintiff written notice that the construction of the sulky plow under the plaintiff's patent was unsatisfactory an d large quantities of said plows had been returned as unserviceable, and that the defendant renounced its license, and would thereafter manufacture a sulky plow of its own design; that the plaintiff offered evidence tending to show that, after defendant renounced its license, it manufactured and sold 960 plows called the 'Berthiaume Plow,' and 350 plows called the 'Harris Plow;' that the defendant objected to this evidence as incompetent and immaterial on the grounds that the plaintiff could not recover for those plows on the contract of license after it had been renounced; that the Berthiaume and Harris plows were not similar to the plaintiff's, and were manufactured under other patents, and that the character of those plows was indicated and described in the prior patents pleaded in the answer; that the court overruled the objections, and the defendant excepted; that it was after it had notified the plaintiff to show that the defendant, after it renounced the license, did not advertise the Starling sulky plow in the usual manner; that the defendant objected to that evidence that it was incompetent, immaterial, and...