Hein v. Westinghouse Air Brake Co.

• Decision Date: 26 August 1909
• Docket Number: 28,067.
• Citation: 172 F. 524
• Parties: HEIN v. WESTINGHOUSE AIR BRAKE CO.
• Court: U.S. District Court — Northern District of Illinois

172 F. 524

HEIN v. WESTINGHOUSE AIR BRAKE CO.

No. 28,067.

United States Circuit Court, N.D. Illinois, Eastern Division.

August 26, 1909

David S. Wegg, for plaintiff.

Buell &amp Abbey and J. Snowden Bell, for defendant.

SANBORN District Judge.

The controversy fully appears in the previous decisions. Westinghouse v. Hein, 159 F. 936, 87 C.C.A. 142; Hein v. Westinghouse Air Brake Co. (C.C.) 164 F. 79; Hein v. Westinghouse Air Brake Co. (C.C.) 168 F 766. In brief, covenant is brought to recover quarterly payments for the sale of patent rights. The chief defense is failure of consideration in that the invention was without utility. Substantially all the technical allegations of the pleas, replications, and rejoinders relate to this defense. The case is complicated, however, by the chancery suit of Westinghouse v. Hein, where Westinghouse attempted to have the contract of sale rescinded for mistake, but it was held that the rejection of the Hein application in the Patent Office was not a final determination of his rights, and that he might still obtain a patent for the claims. This he has done. It is now insisted by his attorney that the chancery suit is now a record estoppel on all questions which Westinghouse might then have raised as a ground of rescission, for the reason that splitting a cause of action is not permitted.

The rejoinders take the same course as the replications; that is in the general one the facts are stated in full, once for all, from defendant's standpoint, and the other rejoinders refer to such statement to sustain its claim that it was not fully informed of all the facts when the contract of sale was made; that it has not received all the benefits it contracted for; that, when the chancery suit was begun, it did not know all the relevant facts, and the equity decree is not therefore res adjudicata; that the contract did not create a license; that such decree did not involve the question whether the decision rejecting Hein's application was final and conclusive, and the court did not decide it; that a patent has not been issued to Hein 'in the exact words and figures in which said claims were contained' in the application; that the patent was not obtained by Hein without unnecessary or improper delay on his part, to defendant's damage; that defendant did not through the Hein patent acquire 'all the rights benefits, and advantages' conferred by the contract, or any thereof; that defendant did not supervise the Patent Office proceedings; that there is no such record as that alleged in the chancery suit; that the Patent Office rejection of Hein's claims was conclusive; and that prior to January 1, 1904, defendant did not have full, complete, and accurate knowledge of all the facts.

From the record it now appears that Hein obtained his own patent and also procured an assignment of the Shepard patent, thus giving Westinghouse everything he contracted for. It also appears that no new fact not previously known came to Westinghouse's knowledge after March 1, 1904, so that when he brought the chancery suit February 1, 1906, he knew all the facts now known. After March 1, 1904, he continued to make the quarterly payments under the contract until July 1, 1905. Westinghouse obtained by contract of sale, therefore, all he bargained for in the Hein and Shepard patents. He knew all the material facts when he brought the chancery suit; and, after he had...