Heath v. AB Dick Company, 12122.

• Decision Date: 22 April 1958
• Docket Number: No. 12122.,12122.
• Citation: 253 F.2d 30
• Parties: Almon A. HEATH, Plaintiff-Appellee, v. A. B. DICK COMPANY, an Illinois corporation, Defendant-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

253 F.2d 30 (1958)

Almon A. HEATH, Plaintiff-Appellee, v. A. B. DICK COMPANY, an Illinois corporation, Defendant-Appellant.

No. 12122.

United States Court of Appeals Seventh Circuit.

February 24, 1958.

Rehearing Denied March 31, 1958.

As Amended April 22, 1958.

Casper William Ooms, John T. Haslett, Chicago, Ill., Herman Hersh, David L. Ladd, Chicago, Ill., of counsel, for appellant.

George E. Frost, Chicago, Ill., for appellee.

Before MAJOR, SCHNACKENBERG and PARKINSON, Circuit Judges.

SCHNACKENBERG, Circuit Judge.

This case was initiated on August 9, 1954 when plaintiff filed a complaint in the district court. On September 21, 1955, it filed a "substitute complaint" (hereinafter referred to as the complaint) to which, the record before us rather obscurely suggests, defendant's amended answer and counterclaim filed December 28, 1954 is the responsive pleading. On March 22, 1955 plaintiff filed an answer to an amended (sic) counterclaim.

The cause, tried without a jury, resulted in a judgment for plaintiff, and defendant has appealed. The record includes the pleadings, oral testimony, and documentary evidence, as well as answers to interrogatories and a response to request for admissions.

The complaint expressly declares upon an action for breach of contract. It alleges, inter alia, that plaintiff is the owner of United States patent 2,203,280 and Canadian patent 409,099, issued to him as inventor on June 4, 1940 and December 8, 1942, respectively.

It is alleged in the complaint and admitted by defendant's answer that, under date of April 30, 1948, defendant's general counsel sent to plaintiff a letter, which reads:

"Dear Mr. Heath:

"As General Counsel for A. B. Dick Company, I am writing you in the interest of that Company regarding U. S. Letters Patent No\'s 1,989,922 and 2,203,280 issued to you.

"I have carefully reviewed all litigation in connection with these patents including the matter of Heath v. Frankel (9th Circuit Court of Appeals), 153 F.2d 369, decided January 15, 1946, petition for rehearing denied February 26, 1946, writ of certiorari denied May 13, 1946. According to the official records in connection with this suit, Patent No. 1,989,922 was held invalid as to all claims and Patent No. 2,203,280 was held invalid as to all claims except 11, 14, 16 and 17. I am advised that thereafter you disclaimed all of the invalidated claims of Patent No. 2,203,280. It is my understanding that you have not disclaimed your rights under claims 11, 14, 16 and 17.

"A. B. Dick Company is interested in obtaining from you a non-exclusive license to make or have made products in accordance with these patents and, of course, is willing to pay a reasonable royalty fee for such a license. Would you, therefore, be kind enough to advise me at your earliest convenience whether you would be interested in granting to A. B. Dick Company a non-exclusive license on a reasonable royalty basis and what figure you have in mind as to a reasonable royalty fee.

"With kind regards, I am "Very truly yours "/s/ John T. Haslett."

and that, under date of May 25, 1948, plaintiff and defendant executed the following agreement:

"Patent License Agreement

"The Agreement made this 25th day of May, 1948 by and between Almon A. Heath of 4311 West 147th Street, Lawndale, California, and A. B. Dick Company of Chicago, Illinois, a corporation of Illinois, hereinafter respectively referred to as Heath and Dick,

"Witnesseth:

"That Whereas Heath warrants that he is the sole owner of United States Letters Patent No. 2,203,280, and Canadian Letters Patent No. 409,099 for stencil film and relating to the stencilization of stencil sheets; and

"Whereas Dick desires to secure a non-exclusive license to manufacture, sell, and use inventions under said patents throughout the United States, Canada and territories thereof, including sales for export,

"Now, Therefore, It Is Agreed by and between the parties hereto as follows:

"1. Heath Hereby grants to Dick a non-exclusive license under the aforesaid patents relating to the stencilization of stencil sheets, to make, use and sell articles, or products embodying said inventions, throughout the United States, Canada and territories thereof, including sales for export.

"2. Dick hereby agrees to pay Heath at his place of business at Lawndale, California, or other places hereafter designated by him, a royalty of ten cents (10¢) per pound of the film material used in the stencilization of stencil sheets under this license. Royalty fees shall be paid quarterly. The first payment under this license shall be made July 1, 1948, and payments shall continue thence on a quarterly basis for the term of this Agreement.

"3. After June 4, 1957, Dick shall have the full and unrestricted right to use the inventions herein licensed without the payment of any further royalties.

"4. Should Claims No\'s 11, 14, 16 and 17 of the Heath Patent No. 2,203,280 be held invalid by a final decree, or by a decree as accepted final by Heath, then Dick shall be under no obligation to pay royalties.

"5. In the event that Dick does not pay its royalties when due, Heath shall have the right to cancel the contract upon giving sixty (60)-day notice, provided that the default is not cured within sixty (60)-days after receipt of such notice.

"6. This Agreement shall be binding as to all parties hereto and to their heirs, legal representatives, successors and assigns.

"7. The term of this Patent License Agreement shall be for the duration of Heath Patent No. 2,203,280."

The complaint further alleges that thereafter defendant did manufacture stencils with protective film of the kind for which royalties were due under the agreement and that defendant paid plaintiff as royalties $13,963.82, for the period from July 1, 1948 to March 31, 1953.

The complaint further alleges that by letter dated June 4, 1953 defendant notified plaintiff that the license agreement between them was to be canceled, but that plaintiff has insisted at all times that the agreement is in full force and effect and that defendant is obligated to pay royalties in accordance therewith.

It is further alleged in the complaint that since March 31, 1953 defendant has continued to manufacture the same product as it did prior to March 31, 1953 and that royalties are due to plaintiff for such manufacture after March 31, 1953, payment of which has been refused, wherefore plaintiff demands judgment.

By its amended¹ answer, defendant, insofar as the issues in controversy in this court are concerned, admits the sending of the letter of April 30, 1948, and the execution of the agreement, but denies its breach, denies that, after the execution of the agreement, it manufactured stencils with protective film of the kind for which royalties were due under the agreement, and sets forth that the "only protective films combined with stencils manufactured, used and sold by Defendant constitute protective films formed of pliofilm (rubber hydrochloride) originally specifically covered by claims 6, 7, 8, 9, 10 and 13 of Plaintiff's patent No. 2,203,280, which have been held invalid and which have been disclaimed by Plaintiff."

It further avers that, in Heath v. Frankel, 9 Cir., 1946, 153 F.2d 369, claims 6, 7, 8, 9, 10 and 13 of patent 2,203,280 were held invalid, which claims specifically covered the pliofilm protective films for stencils manufactured by defendant after May 25, 1948. It also avers that, because of the opinion in Heath v. Frankel, prior to May 25, 1948 plaintiff disclaimed said claims in the Patent Office, and that

"All stencil and protective film assemblies which have been or are being made, used and sold by Defendant constituted or constitute elements which Plaintiff expressly and publicly disclaimed as his invention and were and are free to be made, sold and used by anyone without infringement of claims 11, 14, 16 and 17 of the Heath patent No. 2,203,280 or the corresponding claims of the Canadian patent No. 409,099."

While defendant's answer admits having paid plaintiff $13,963.82, it denies that is was forthcoming to plaintiff under the license agreement and states that it

"was made under a mistake of fact attributable chiefly to department-alization of Defendant, since the stencil and protective film assemblies made, used and sold by Defendant are not of the type covered by claims 11, 14, 16 and 17 of the Heath patent No. 2,203,280, but are of the type expressly disclaimed by Plaintiff from his patent, wherefore no royalty payments have been or are due and owing to Plaintiff under the agreement, and the sum of $13,963.82 mistakenly forwarded to Defendant should rightfully be returned."

In its answer defendant explains the letter of cancellation by saying that it was sent because defendant had not since May 5, 1948 practiced the invention covered by claims 11, 14, 16 and 17 of the United States patent or the corresponding claims of the Canadian patent, and that by its letter it intended to notify plaintiff that it had not, previous to June 4, 1953, practiced the invention assertedly covered by said claims 11, 14, 16 and 17 and that it would not in the future practice the alleged...