Covell v. Bostwick
| Decision Date | 15 July 1889 |
| Parties | COVELL v. BOSTWICK. |
| Court | U.S. District Court — Southern District of New York |
William H. Arnoux, for plaintiff.
Charles C. Beaman, Jr., and Edward N. Dickerson, for defendant.
This cause has been tried by the court upon written waiver of a jury. Improvements in sheet-metal cans, including an interior interlocking corner joint, were patented to Emile Peltier August 31, 1860, in France, and August 27, 1861, in England. Letters patent of the United States, No. 43,371, for such improvements, including a corner joint like that patented to Peltier, were granted to George W. Prince, assignor, June 28 1864. The plaintiff was an inventor of improvements in such cans, and in their manufacture, and had three patents of the United States relating to them. One, No. 42,351, granted to him April 19, 1864, was for uniting the sides of such cans by an interior interlocking corner joint, and securing the heads in place by internal grooves; another, No. 52,972, granted to him March 6, 1866, showed a corner joint like that of Peltier, and covered cans having a similar joint uniting the bottom to the sides so as to be flush with their ends; and another, No. 63,220, was for a soldering-machine for soldering such cans, granted to him March 26, 1867. He had also invented a machine for clamping the edges of such cans for which he had applied for a patent. On March 2, 1869, he entered into an agreement in writing with the defendant which was modified by another of December 30, 1870, by the terms of which he granted to the defendant the exclusive right to manufacture and sell sheet-metal cans embodying the inventions of these patents, which would be those of April 19, 1864, and March 6, 1866, and which the plaintiff was to maintain and defend, and to use in their manufacture, and not otherwise, at the defendant's own risk, without payment of further royalty, the soldering-machine, the machine for clamping the edges of cans, and all improvements in such cans and machines and appliances for the manufacture of cans which the plaintiff should invent or acquire by purchase, for a royalty of one cent per can, on which was to be stamped conspicuously, 'Covell's Patents: April 19, 1864; Mar. 6, 1866. ' On September 21, 1869, the plaintiff obtained a patent for the machine for clamping the edges of cans; and on December 5, 1871, patent No. 121,490 was granted to him for an improvement in the corners of the heads of rectangular cans.
The defendant commenced the manufacture under the license of square-cornered cans, which had an interior interlocking corner joint, embodying the invention of the patents of Peltier and of Prince, and was like the joint shown in the plaintiff's patent of March 6, 1866; and those made after his patent of December 5, 1871, embodied the invention of that patent. In the manufacture of all of them the invention of the plaintiff's patent of September 21, 1869, was employed. None of them had flush heads, and none of them embodied the patented invention of the plaintiff's patent of March 6, 1866. The parties mutually understood that the interlocking corner joint used in their manufacture was covered and protected by the plaintiff's patent of April 19, 1864. The defendant so made before April 1, 1877, 11,071,290 of these cans, which he reported to the plaintiff, and paid the royalty on, from time to time, according to the terms of the agreement of license. The royalties so paid amount to $110,712.90. At about that time the defendant commenced the manufacture of round-cornered cans, which were made by the same machinery as the square-cornered cans, and were in all material respects like them, except that the joint uniting the sides was in the curve of the round corner instead of at the angle of a square corner, and became the old and well-known joint of common stove-pipe and of tin-pails, instead of being the corner joint of any of these patents. At about the same time George W. Banker, who had become the owner of the patent to Prince, commenced suit upon it against the defendant for infringement of it by making these square-cornered cans. In the agreement of license was a clause providing that payment of royalties should be suspended during the pendency of such suit, unless the plaintiff should furnish security for refunding them in case the suit should be determined adversely to him. The plaintiff assumed the defense of that suit, and brought a cross-suit against Banker to repeal the Prince patent for alleged interference with his patent of April 19, 1864, and with his rights under it in bringing the suit against the defendant, but did not furnish security for repayment of royalties. The defendant suspended payment of royalties, but continued to make and report the square-cornered cans to the number of 1,615,983, on which he has paid no royalty. He continued to make the round-cornered cans, and reported them to the plaintiff, with a claim that they were not such as a royalty was to be paid upon, but in order that the plaintiff might know how many were made, and that any claim for the use of his patented inventions about them might be readily adjusted. The two causes proceeded to hearing under a stipulation that the same proofs should be used in both, and that they should be heard and determined together. The Peltier patent was not brought into that litigation, and does not appear to have been known to those concerned. It resulted in a decree for an injunction and an account against the defendant for the infringement of Banker's patent, and a decree dismissing the plaintiff's bill against Banker on the ground that the invention of the plaintiff's patent of April 19, 1864, was of a different joint from that of the Prince patent, which the defendant had used. Banker v. Bostwick, 3 Fed.Rep. 517. After these suits were so decided the defendant employed counsel for himself, who discovered the Peltier patent, and called the attention of counsel for the plaintiff and of Banker to it, and all agreed that it was a full anticipation of the corner joints of the other patents. Thereupon the defendant, pursuant to an understanding with the plaintiff, settled with Banker, and procured him to discontinue his suit for $6,000, which the defendant paid and charged to the plaintiff with his approval, and which was about what those concerned thought would be the expense of getting the Peltier patent into the litigation. The defendant made 11,581,719 of these round-cornered cans before this termination of the litigation, and reported them to the plaintiff, under the claim stated that they were not subject to the royalty on one cent per can. This suit is brought to recover the royalty of one cent per can on the square-cornered cans, amounting to $115,817.19. The defendant denies liability for these royalties, and sets up a counter-claim for the royalties paid.
The plaintiff's patent of April 19, 1864, was a prominent subject of the litigation with Banker. Both parties here were parties or privies to both of those suits, and the decrees in each, to the extent that they were final, are binding and conclusive upon both. 1 Greenl.Ev. §§ 523, 551. The decree in Banker v. Bostwick, although made in some senses on final hearing, was interlocutory merely, and did not become absolutely final before the suit was discontinued. The decree in Covell v. Banker was made upon the same considerations and was final and conclusive. It established that the corner joint used by the defendant in the manufacture of the square-cornered cans was not covered by the plaintiff's patent of April 19, 1864, but was covered by the Prince patent. These cans, therefore, did not actually embody the exact invention of either of the plaintiff's patents for the use of which by the terms of the license the royalty was to be paid. The defendant, however, had and enjoyed the use of these patents of the plaintiff for exactly what they mutually understood he was to have them for. He occupied a field, as of exclusive right, which they supposed the patents covered, under them, although they did not cover that precise field. His situation in this respect was like that of a lessee who should occupy and enjoy premises supposed to be the leased premises, but which should not be precisely such. That a patent or lease should fail to cover the invention or premises bargained for by want of description would seem to be no better defense to an action for royalty or rent than if it failed to do so by want of right or title. That...
To continue reading
Request your trial
-
Free-Flow Muffler Co. v. Kliewer, FREE-FLOW
...C.C., 97 F. 807. The same principle has also been applied to hold the defendants liable as licensees in the following cases: Covell v. Bostwick, C.C., 39 F. 421; Pope Mfg. Co. v. Owsley, C.C., 27 F. 100-108; Milligan v. Lelance, etc., Co., C.C., 21 F. 570; Kirkpatrick v. Pope Mfg. Co., C.C.......
-
Meissner v. Standard Ry. Equipment Co.
...preceding point. Thorn Wire Co. v. Washburn & Moen Co., 159 U.S. 451; Fox Solid Pressed Steel Co. v. Schoen Mfg. Co., 84 F. 545; Covell v. Bostwick, 39 F. 426; Wright v. Bros. Co., 133 F. 394. (7) The doctrines established by the Federal courts for the interpretation of patents have become ......
-
Dwight & Lloyd S. Co. v. American Ore Reclamation Co.
...97 F. 807, 809, cited with approval in Limbershaft Sales Corporation v. A. G. Spalding & Bros., 2 Cir., 111 F.2d 675, 677; Covell v. Bostwick, C.C., 39 F. 421, 424; Piaget Novelty Co. v. Headley, 2 Cir., 108 F. 870, 872, 873; Niagara Fire Extinguisher Co. v. Hibbard, 7 Cir., 179 F. 844, 850......
-
McKenna Process Co. of Illinois v. Blatchford Corp.
...(C.C.) 97 F. 807. The same principle has also been applied to hold the defendants liable as licensees in the following cases: Covell v. Bostwick (C.C.) 39 F. 421;Pope Manufacturing Company v. Owsley (C.C.) 27 F. 100-108;Milligan v. Lalance, etc., Company (C.C.) 21 F. 570;Kirkpatrick v. Pope......