Cassidy v. Evan L. Reed Mfg. Co.
| Decision Date | 03 November 1923 |
| Parties | CASSIDY v. EVAN L. REED MFG. CO. |
| Court | U.S. District Court — Eastern District of Illinois |
Gunn Penwell & Lindley, of Danville, Ill., and Ralph Orwig, of Des Moines, Iowa, for plaintiff.
Rearick & Meeks, of Danville, Ill., and Walter N. Haskell, of Rock Island, Ill., for defendant.
Plaintiff citizen and resident of the state of Iowa, owner of letters patent No. 1,064,289, issued June 10, 1913, on a folding stool, about May 1, 1918, entered into a contract with defendant, Evan L. Reed Manufacturing Company, an Illinois corporation, then doing business at Sterling, Ill., whereby plaintiff licensed said defendant to manufacture the said stools and to sell them throughout the United States, for payment of royalty as provided in said contract. The contract contains this express provision:
'The manufacture however, of such folding stools shall be limited to the factory of said licensee at Sterling Illinois.'
After the execution of said contract the defendant manufactured and sold stools, as licensed, and paid the royalty to plaintiff, until March, 1922, marking each of the stools manufactured as being licensed under the said patent, as required by the contract. Since March, 1922, no royalty has been paid. On May 25, 1922, the defendant wrote plaintiff that its woodworking factory had been destroyed by fire on March 24th, and that it had made no shipment of stools subsequently. Thereafter the defendant moved its plant to Danville, Ill., where it is now engaged in the manufacture of woodwork products. On April 9, 1923, defendant wrote plaintiff that it had ceased making stools under the patent; that the stools then being manufactured did not conflict with the claims of the patent. Plaintiff brought the present suit for injunction and accounting, praying that the defendant might be enjoined from manufacturing or selling folding stools containing the invention of the said Cassidy patent.
Upon the hearing before the court, when the evidence was presented, considerable attention was given by counsel for both parties to the effect of the contract, plaintiff claiming that same created an estoppel against the defendant from denying the validity of the Cassidy patent, and that the contract covers the manufacturing of stools at Danville, in view of the fact that the plant was removed from Sterling to Danville.
The defendant contends that the contract has nothing to do with the operation at Danville, and that the relation of the parties is the same as if the contract had never existed.
The provisions above quoted from the contract indicate that the contract was to apply at Sterling only, but it is also manifestly the same as a negative covenant not to manufacture at any place other than at Sterling, and the manufacture and sale of the stools containing the invention of the Cassidy patent is undoubtedly a breach of the implied negative covenant, and the defendant, in view of this situation, if not estopped to deny the validity of the patent, has at least by its contract and implied covenants admitted the validity of the patent, which it has covenanted not to infringe at any place, and under which it has agreed to pay royalty for the manufacture at Sterling. Irrespective, however, of the question of estoppel, the court has examined the evidence in order to determine the validity of the patent, and whether or not same had been infringed by the action of defendant at its Danville plant.
Upon the question of validity, it is contended that the patent in issue was anticipated by the prior art of Young, 105,761 Knoeller, 433,795, Seaman, 604,482, Wagner, 440,730 and Schneider, 444,621, all issued prior to 1900. The record of the Patent Office, as disclosed by the contents of the file wrapper in Cassidy, 1,064,289, shows that the Examiner considered each of the said former patents, and three times rejected the application because of them, but upon final amendment allowed the application upon the claim as it now appears in the letters; the patent being purely one of combination of elements, none of which, taken...
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...the machines to its "own use". If the words were not of themselves a covenant by appellant one would be implied. See, Cassidy v. Evan L. Reed Mfg. Co., D. C., 293 F. 797. Appellant contends that the agreement not to use the machines other than for its own use only prohibited the rental of t......
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Midland Steel Products Co. v. Clark Equipment Co.
...the machines to its `own use'. If the words were not of themselves a covenant by appellant one would be implied. See, Cassidy v. Evan L. Reed Mfg. Co., D.C., 293 F. 797." In the case of Eskimo Pie Corporation v. Arctic Fruit Ices, Inc., D.C., 15 F.2d 853, the court stated: "The license agre......
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Chance v. Lehigh Nav. Coal Co., 9637.
...142, "There is no longer any contract relation, and there is no ground of estoppel." This was not a time limitation. In Cassidy v. Evan L. Reed Mfg. Co., D.C., 293 F. 797, Judge Lindley held that there was a contract relation between the parties which covered the whole country because the L......