Hein v. Westinghouse Air Brake Co.
| Decision Date | 23 February 1909 |
| Docket Number | 28,067. |
| Citation | 168 F. 766 |
| Parties | HEIN v. WESTINGHOUSE AIR BRAKE CO. |
| Court | U.S. District Court — Northern District of Illinois |
David S. Wegg, for plaintiff.
Buell & Abbey, J. Snowden Bell, and Thomas W. Bakewell, for defendant.
Declaration in covenant, filed December 21, 1905, upon a sealed contract and breaches assigned. The contract is attached as an exhibit, and purports to have been made November 24, 1902 between plaintiff, of the first part, and George Westinghouse and the defendant company, of the second part. It recites that George Westinghouse is the owner of certain patents on friction draft and buffing apparatus, and that the defendant corporation is the sole licensee of these patents. It is further recited that Hein has made certain like inventions and applied for patents thereon, and it is desired by the second parties to acquire the exclusive right to the Hein inventions, and patents to be issued therefor. Therefore the parties agree as follows:
Agreements by Hein: Grant to Westinghouse, and through him to the company, of such exclusive rights. Should Hein acquire any inventions relative to friction draft and buffing apparatus, he will at once disclose them to Westinghouse, and on demand execute to him the necessary agreements to bring them within the contract.
Agreements by second parties: To pay 25 cents royalty or license fee upon each friction draft and buffing apparatus they shall manufacture and sell during the term of the agreement, of whatever construction, and render to Hein quarterly accounts on the 1st of January, April, July, and October of each year, or within 30 days thereafter, statements showing the number of said articles so made and sold, with payment for the amounts shown to be due him. Westinghouse shall develop the inventions to bolster springs, in which case Hein shall convey to him the legal title to the patents obtained, with a provision for reconveyance upon the termination of this agreement, and if he does not do so Hein may utilize the inventions for bolster springs. Second parties shall defend infringement suits, and in case of infringement by others, they may join the owners of the legal title in any infringement suit, at the expense of second parties. If a patent suit is begun against second parties for infringement by the sale or use of said devices, and an injunction is granted and sustained on appeal, this contract may be declared void at the option of said Westinghouse. The contract is to continue 17 years from January 1, 1903.
The declaration alleges that defendant complied with the contract from January 1, 1903, to July 1, 1905, and in July, August, and September, 1905, sold 40,000 of the apparatus made by it, and on October 31, 1905, owed plaintiff $10,000 thereon, which it failed and refused to pay, whereby the covenant was broken. Shortly after suit was brought the second parties brought a suit in equity in this court against Hein for the rescission and cancellation of the contract, on the ground that Hein was not the real inventor of the apparatus referred to, which was dismissed by the court because prematurely brought, and the dismissal affirmed on appeal. Westinghouse v. Hein, 159 F. 936, 87 C.C.A. 142. The history of the course of Hein's applications through the Patent Office is fully stated in the opinion of the Circuit Court of Appeals.
Upon the bringing of the equity suit this action was by agreement held in abeyance until the other was finally decided, when the defendant filed 22 pleas to the declaration. Thereupon the plaintiff, desiring to raise numerous defenses to the pleas, conceived that, in view of the intricacy of the facts and their variety and voluminous character, it would conduce to brevity and simplicity, and avoid undue and vexatious prolixity, if he might be permitted to plead the facts relied on by the plaintiff to meet the defenses set up in the pleas once for all, without being required to repeat them in each replication. After hearing the motion an order was made allowing plaintiff to reply to two or more pleas by one replication, file two or more replications to the same plea, reply several matters to one or more pleas, reply generally by the traverse de injuria, include therein two or more pleas, and to make a single statement of facts without the necessity of repeating it in any replication; but the defendant should not be prejudiced by such change of form, nor its rights affected, and it might demur, plead, or otherwise object in any manner, except to raise formal objections justified by the order, to the same extent as if such order had not been made. Hein v. Westinghouse Air Brake Co. (C.C.) 164 F. 79.
From the opinion in the Court of Appeals in the equity case, and the general replication or statement of facts filed under the order, it appears that Hein applied for patents on his inventions, sold them to Westinghouse by the contract sued on, was met in the Patent Office by an interference with Shepard, which was decided in Shepard's favor, a patent issued to Shepard and bought in by Hein, and finally a patent issued to Hein. Assuming this to present the real state of facts, the defendant, in order to make any defense, must show that it did not make the contract, or that for some reason it is no longer bound...
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