Cowles Electric Smelting & Aluminum Co. v. Lowrey

• Decision Date: 15 February 1897
• Citation: 79 F. 331
• Parties: COWLES ELECTRIC SMELTING & ALUMINUM CO. et al. v. LOWREY.
• Court: U.S. Court of Appeals — Sixth Circuit

79 F. 331

COWLES ELECTRIC SMELTING & ALUMINUM CO. et al. v. LOWREY.

United States Court of Appeals, Sixth Circuit.

February 15, 1897

The bill in this case was filed in the court below by Grosvenor P. Lowrey, of the city of New York, against the Cowles Electric Smelting & Aluminum Company, an Ohio corporation doing business at Cleveland, and Alanson T. Osborn, the treasurer of the company, for the purpose of removing a cloud upon the title of the complainant in two patents assigned to him by one Charles S. Bradley, the patentee therein, and to quiet the title of the complainant in said patents. The bill after setting up the obtaining of the patents by Bradley and the transfer thereof to the complainant, alleged that the defendant, the Cowles Electric Smelting & Aluminum Company had set up and asserted title to the same patents, under a certain contract made on the 18th day of May, 1885, between the said Cowles Electric Smelting & Aluminum Company of the one part and the said Charles S. Bradley and one Francis B Crocker of the other part, whereby, as the defendants claimed, all the right, title, and interest of the said Bradley in the invention covered by the patents so assigned to the complainant had been assigned by the said Bradley to the said company; and that the company had executed an instrument of assignment of the said patents to Alanson T Osborn, its treasurer, and caused the same to be placed upon the record of assignments in the patent office. It is claimed in the bill that this instrument of assignment to Osborn was false and fraudulent, and had no foundation in the contract upon which the company claimed title, and that putting the same on record and the assertion of claim to the Bradley patents, under a claim founded upon the contract above mentioned, operated to create a cloud upon the complainant's title. The contract made specific mention of an application of Bradley and Crocker, No. 158,805, then on file in the patent office. The bill sets out this contract in an exhibit, which will be presently copied, and alleges: 'That while the language in said agreement between Crocker and Bradley and said Cowles Electric Smelting & Aluminum Company is broad enough in its general terms to cover other inventions of said Crocker and Bradley than that embraced in said application No. 158,805, it was not intended to and did not in fact embrace any other inventions;' and that the application of Bradley, upon which the patents were issued to him as above mentioned, 'was not by any act, understanding, or contract of the parties included in said agreement of May 18, 1885. ' The defendants appeared and pleaded to the bill, the substance of the plea being a statement of the facts and circumstances under which the contract of May 18, 1885, was executed, and a claim of title to the Bradley invention; and an answer, setting up substantially the same facts, was filed in support of the bill. The case having been brought on for hearing upon the defendants' plea, the same was overruled by the court, and the defendants, under leave of the court, then filed a further answer to the bill, and they also filed a cross bill, praying that the assignment to the said Grosvenor P. Lowrey might be decreed to be null and void, and that he might be perpetually enjoined from claiming any right, title, or interest in the said Bradley patents or either of them. Thereupon, a replication to the answer having been filed, and the pleadings upon the cross bill having been perfected, proofs were taken, and the cause again came on for final hearing. The case having been heard and considered, the court below decreed in favor of the complainant, holding, in its opinion, that Bradley's invention did not pass to the Cowles Electric Smelting & Aluminum Company by the contract of May 18, 1885. The opinion of the court upon the overruling of the plea is found in 56 F. 488, and the opinion on the final hearing in 68 F. 354. On the 8th of April, 1885, one Colgate Hoyt, acting in behalf of the Cowles Electric Smelting & Aluminum Company, procured from C. S. Bradley, who resided at Yonkers, N.Y., an option for the purchase of an interest in Bradley's inventions in the art, and took from him a writing witnessing it, as follows:

'New York, April 8, 1885.

'By and between Charles S. Bradley and Colgate Hoyt, both of Yonkers, in the state of New York, it is agreed as follows: Said Bradley shall, upon demand of said Hoyt, made at any time within ninety days from the date hereof, assign to said Hoyt, or his order, for the consideration of ten thousand dollars cash, an undivided one-quarter interest in all inventions which he has hitherto made in electric furnaces, and in the reduction of ores by electricity, and of all patents to be granted therefor, whether applications for such patents have already been filed or shall hereafter be filed, in the patent office of the United States; and, in consideration of the option being granted, said Hoyt, or the party to whom he may have assigned the same, shall pay to said Bradley, at the date hereof, the sum of five hundred dollars.

'Charles S. Bradley. ' 'New York, April 8, 1885.

'Received of Colgate Hoyt five hundred dollars.

'Charles S. Bradley.'

This appears to have been in duplicate, for upon the making of the contract next to be mentioned such a writing was delivered up by each of the parties to the other.

Not long thereafter a correspondence was opened by the company with Bradley and Crocker for the purpose of purchasing their inventions, the immediately moving causes of which were an interference which had been declared in the patent office between one of the Cowles applications and that of Bradley and Crocker, and an interference of a caveat of Bradley and Crocker with another of the Cowles applications. The result of this correspondence was that Bradley and Crocker came to Cleveland a day or two before the 18th of May, and, after further negotiations, reached an agreement. The contract upon which the controversy turns was made on the day of its date, and is here set forth, as follows:

'This agreement, entered into this 18th day of May, 1885, between F. B. Crocker, of New York City, N.Y., and C. S. Bradley, of Yonkers, N.Y., constituting the first party, and the Cowles Electric Smelting and Aluminum Company, of Cleveland, Ohio, a corporation organized under the laws of the state of Ohio, constituting the second party, witnesseth that whereas, the first party have made certain discoveries and inventions relating to electric smelting processes and furnaces, and have made some applications for patents therefor, in the United States patent office; and whereas, the said second party is desirous of becoming the owner of such discoveries and inventions,--it is therefore agreed between the parties as follows: (1) For the consideration hereinafter mentioned, the receipt of which to our full satisfaction is hereby acknowledged, the said first party does hereby sell, assign, and set over to the said second party all their interest in any and all discoveries and inventions relating to electric smelting processes and furnaces, and all patents they have obtained therefor, and all applications now pending and caveats on file in the United States patent office relating to electric smelting processes and furnaces, which do or may interfere with any application for patents made by Eugene H. Cowles and Alfred H. Cowles, of Cleveland, Ohio, now pending in the United States patent office. It is understood and agreed between the parties that this clause also includes the application of said first party now pending in the United States patent office and designated 'Serial Number 158,805,' and filed March 14, 1885. (2) Said first party also sells, assigns, and sets over to said second party their entire interest in all inventions, patents, and applications for patents in all foreign countries for the discoveries and inventions mentioned in the preceding clause of this agreement. (3) Said firs party hereby authorizes and requests the commissioner of patents to issue to said second party patents for said discoveries and inventions mentioned in the first clause of this agreement. (4)Said first party for said consideration further agrees to sign and execute all papers necessary to perfecting applications for said inventions and obtaining patents therefor. (5) In consideration of the preceding, said second party hereby pays in hand to said first party the sum of five thousand dollars. In testimony whereof said parties have hereunto set their hands the day and year first above written.

Francis B. Crocker. 'Charles S. Bradley.'

The material facts and circumstances which are referred to by the respective parties for the purpose of construing this contract, and ascertaining the intent and purposes of the parties therein, were these: The Cowles Electric Smelting &amp Aluminum Company, having just been organized at Cleveland, was about to engage in business, principally that of the manufacture of aluminum. In aid of this purpose it had become the owner of several inventions made by Eugene H. and Alfred H. Cowles, relating to the reduction of metallic ores and compounds, and especially to the production of aluminum from its ores and compounds by smelting them by means of the electric current. The first of these applications was one filed December 24, 1884, by E. H. & A. H. Cowles, and it was stated therein that their invention related to improvements in electrical furnaces and the method of operating the same; and it was further stated that the invention related to that class of electric furnaces in which heat was generated by means of the incandescence of a resistance body. The apparatus contemplated consisted of the electrodes of a...