Aspinwall Mfg. Co. v. Gill

• Decision Date: 18 July 1887
• Citation: 32 F. 697
• Parties: ASPINWALL MANUF'G CO. v. GILL and another.
• Court: U.S. District Court — District of New Jersey

32 F. 697

ASPINWALL MANUF'G CO. v. GILL and another.

United States Circuit Court, D. New Jersey.

July 18, 1887

Francis Forbes, for complainant.

F. C Lowthorp, Jr., for defendants.

BRADLEY Justice.

The bill in this case was filed to restrain the infringement of two certain patents, and to recover profits and damages for the infringed thereof. The patents sued on were granted to Lewis Augustus Aspinwall for improvements in potato planters,-- one dated December 14, 1880, and numbered 235,401, but subject to the limitation prescribed by section 4887, Rev. St. U.S., by reason of a British patent for the same invention, dated October 27, 1874, and July 30, 1878 the other patent sued on was dated May 8, 1883, and numbered 276,994. By separate deeds of assignment bearing date September 19 1885, the said Aspinwall assigned said patents, and all claims and demands against any party for infringing the same to the complainant. The bill alleges infringement by the defendants, and prays the usual relief. The defendants set up two grounds of defense; a license from Aspinwall, and an assignment of a part interest in the patents themselves.

1. The license relied on was pleaded in this wise: They allege that about the first of January, 1882, Aspinwall, after having obtained the first of the patents sued on, and made application for the other, and having, as he asserted, obtained letters patent from the governments of Great Britain and of Germany for improvements in potato planters, agreed with the defendants for the construction and sale by them of 100 machines containing the said improvements, and also 100 machines known as potato diggers. The answer states that the object of this agreement was to bring the machines into notice, and to introduce them into common use; and that, in pursuance of the agreement, the defendants expended a large amount of money under the direction of said Aspinwall, who in violation of his agreement, left the works of defendants in August, 1882, and forbade them to make any more machines. They deny that they ever constructed or used or sold any machines except those constructed upon the express order of Aspinwall prior to said agreement, or in pursuance thereof afterwards.

The evidence in the case shows that such an agreement was made as stated in the answer; and that Aspinwall superintended the making of machines in the defendants' works at Trenton, during the year 1882, until some time in August of that year, when the parties had a difficulty, which resulted in Aspinwall's leaving, and forbidding the defendants to manufacture any more machines. I am not satisfied, from the evidence, that Aspinwall was justified in his conduct. I think the right to complete the manufacture of 100 machines remained in the defendants, and that they cannot be called to account in this suit for completing and disposing of the same. It is also very clear that Aspinwall, during the years 1883, 1884, and 1885, endeavored to embarrass the defendants in disposing of the machines made by them, by announcing that they had no right to manufacture them, threatening suits against purchasers, etc. All this was sufficient to excuse the defendants in some delay in completing the 100 machines. But the evidence is very clear that they had manufactured and disposed of the full number before this suit was commenced, and that they had undertaken the manufacture of several more. Bennington Gill himself testifies that they had made and sold 85 machines before the commencement of the suit; that they had made in all 125, all of which, except about a dozen, were entirely completed. Of course, the defendants cannot pretend that their license to build 100 machines gave them any right to build any more than that; and it is clear, therefore, that in making the remaining 25 machines they were acting without authority. The defense of license is good, and has been maintained as to the 100 machines, but no more. As to the others, this defense fails. If Aspinwall was guilty of misconduct in trying to embarrass the defendants in the disposal of their 100 machines, he may have made himself liable to an action for damages; but he did not thereby extend the license beyond 100 machines.

2. The other defense set up in the answer is part ownership of the patents sued on, alleged to have been acquired by the defendants by virtue of certain assignments. It seems that in 1869 Aspinwall obtained certain letters patent for a potato planter, dated November 30 of that year, and numbered 97,339, which contained at least some of the elements embraced in the two patents now sued on. On the fifteenth of January, 1870, he assigned this patent to 11 persons (including himself as one) by an instrument of which the following is a copy, to-wit:

'IMPROVEMENT IN POTATO PLANTERS, NO. 97,339.

'What I claim as my invention, and desire to secure by letters patent is: (1) A spear, or spears, provided with trips; (2) operating the trips, substantially as described; (3) the V-shaped concave, C, constructed and used in the manner described; (4) swinging the plow and covers from the main frame, substantially as described, and for the purposes set forth.

'L. AUGS. ASPINWALL.

'Whereas, L. Augustus Aspinwall, of Albany, N.Y., did on the thirteenth day of November, 1869, obtain letters patent for the United States of America, securing him, his heirs, administrators, or assigns, for the term of seventeen years, the sole right to make, vend, and sell to others, to be used, the said improvements; and whereas, D. H. Wyckoff, Stacy P. Conover, Joseph H. Holmes, Joseph J. Thompson, John I. Thompson, Jonathan Longstreet, George Schanck, Garret R. Schanck, Daniel Smock, David Schenck, Jr., L. A. Aspinwall, are desirous of obtaining an interest in said invention, this is therefore to certify that I, L. A. Aspinwall, do hereby set, sell, and convey over to said parties my entire right and title in said patent for the following territory, viz., the United States of America, without reserve, for the sum of twelve thousand dollars, the receipt of which is hereby acknowledged, together with all improvements I may hereafter make, without further cost.

'Witness my hand and seal the fifteenth day of January, 1870.

(Signed) L. AUGUSTUS ASPINWALL. (L.S.)

'Witnesses: JONATHAN LONGSTREET.

'GEORGE SCHANCK.'

This instrument was duly recorded in the patent office, November 3, 1882.

On the eighth day of November, 1882, four of the parties named in the previous assignment, to wit, David H. Wyckoff, Stacy P Conover, Joseph...