Jackson v. Allen

• Citation: 120 Mass. 64
• Court: United States State Supreme Judicial Court of Massachusetts
• Decision Date: 07 March 1876
• Parties: James L. Jackson & another v. Aaron H. Allen

120 Mass. 64

James L. Jackson & another v. Aaron H. Allen

Supreme Court of Massachusetts

March 7, 1876

Argued September 3, 1875; March 17, 1874; November 20, 1875. [Syllabus Material] [Syllabus Material] [Syllabus Material] [Syllabus Material] [Syllabus Material] [Syllabus Material] [Syllabus Material] [Syllabus Material]

Suffolk. Contract upon the following indenture, dated March 23, 1869, and signed by the plaintiffs and the defendant:

"Whereas certain letters patent of the United States, bearing date the 5th day of December, 1854, were issued to A. H. Allen of Boston in the county of Suffolk and State of Massachusetts, for improvements in chairs for theatres, school-houses and dwelling houses, which said letters patent were afterwards surrendered, and new and reissued letters patent for the same invention granted to the said Aaron H. Allen on the 15th day of January, 1861, which reissued letters patent were extended for the term of seven years from the 5th day of December, 1868; and whereas James L. Jackson and Peter H. Jackson, composing the firm of James L. Jackson & Brother, of the city and State of New York, are desirous of obtaining a license to use the improvement so patented to the said Allen in and upon chairs for theatres and other buildings, to be manufactured and sold by them, the said James L. Jackson & Brother, excepting only folding portable chairs of the character and such as is commonly known as camp stools or chairs, and those now known as school furniture seats:

"Now this indenture witnesseth, that the said Aaron H. Allen for and in consideration of the sum of one dollar to him in hand paid by the said James L. Jackson and Peter H. Jackson, composing the firm of Jas. L. Jackson & Brother, the receipt whereof is hereby acknowledged, and of the covenants hereinafter re cited to be kept and performed by the said James L. Jackson & Brother, has given and granted, and by these presents does given and grant, unto the said James L. Jackson & Brother the exclusive liberty, license, power and authority to make, use and sell within and for the United States, for and during the unexpired term of said patent, the said improvement as patented under and by said letters patent, excepting only the adaptation of said improvements to camp chairs and school furniture as hereinbefore recited, upon the terms and conditions herein contained, and upon the payment of the sums of money as herein provided.

"1st. The said James L. Jackson & Brother covenant and agree to pay to the said Aaron H. Allen the following sums upon all chairs manufactured and sold by them, containing and using said improvements or any substantial part thereof, as follows, that is to say, upon each and every such chair the sum of thirty-five cents.

"2d. The said James L. Jackson & Brother also covenant and agree to keep full and correct books of account of any and all said chairs which they may manufacture containing or using the said invention, which said books of account shall be open at all reasonable times to the inspection of said Aaron H. Allen and his representatives, or his or their attorney; and on the first days of January, April, July and October of each and every year to make a true return of all such chairs manufactured and sold by them as herein authorized during the past quarter, and also remaining unsold, and within thirty days thereafter to pay to said Aaron H. Allen or his representatives, upon all such chairs so manufactured and sold, the sum of thirty-five cents each, royalty, as hereinbefore provided, and agreeable to the returns herein required.

"3d. The said Aaron H. Allen reserves to himself and does not grant to the said James L. Jackson & Brother the adaptation of said improvements so patented to folding portable chairs of the character and such as is commonly known as camp stools or chairs, and those now known as school furniture seats.

"4th. The said James L. Jackson & Brother further covenant and agree to mark or paint on each and every chair made and sold by them under this license, using or employing the said invention or any part thereof, the following: Patented December 5, 1854; January 15, 1861, ext'd December 5, 1868.'

"5th. The said Aaron H. Allen covenants and agrees that he will not grant licenses to any other person or persons to make and sell chairs of the character herein licensed to James L. Jackson & Brother: Provided the said James L. Jackson & Brother use due diligence in pushing the invention and supplying the public demand therefor. On their failure to do which at any time after twelve days' notice in writing being given, the said Aaron H. Allen reserves to himself the privilege to license other parties at his pleasure.

"6th. The said Aaron H. Allen hereby agrees to institute or cause to be instituted legal proceedings against any and all parties, at his own expense, who may from time to time infringe said letters patent; and he shall exercise due diligence in all such proceedings, so as to restrain such parties as promptly as possible, in order that the said James L. Jackson & Brother may enjoy the exclusive privilege of making and selling the chairs in question without competition.

"7th. This license and agreement shall be binding upon the heirs executors, administrators, assigns or other legal representatives of either and all of the parties hereto."

The declaration alleged as breaches of this contract: first, that the defendant had granted a license to one Bernhard Koechling to make and sell the patented chair; and, second, that the defendant had refused and neglected to prosecute Koechling as an infringer. Answer, a general denial. Trial in this court, before Wells, J., who allowed a bill of exceptions in substance as follows:

On March 23, 1869, the plaintiffs and the defendant executed the instrument declared on, and it was recorded in the patent office on October 8, 1869. The defendant's reissued letters patent of January 15, 1861, were for an "improvement in seats for public buildings," described as follows: "The nature of my invention consists in a seat, set and moving upon a cross shaft or hinge, in such manner as that the seat, or front sitting portion thereof, can be turned up or elevated to afford room in passing into or out of the seat, or past it, and said seat forming a lever that, when down or adjusted to a sitting level, strikes and is supported by a stop which may be located in the rear of the seat fulcrum, and serves to sustain the seat and person occupying the same, the seat being extended backwards in rear of its fulcrum, and coming up under said stop. Such seat may be counterpoised so as to assume and retain a vertical or nearly vertical position when raised or not in use." "When there are a series of seats in a row, a continuous shaft or fulcrum may be used by forming on the end of each alternate section a screw arranged to pass through the frame or standard into a screw box or female thread connected with each adjoining section." "What is here claimed as new and useful is a swinging or lever seat, set and moving upon a cross shaft or hinges, and sustained when in use by a stop or stops so disposed as that the rear portion of the seat comes in contact with said stop or stops when the seat is turned down, substantially as herein set forth; and whether combined or not with weights or springs whereby the said seat may assume and retain a vertical or raised position automatically as herein specified."

The original patent was assigned by the defendant to Enos G. Allen and in 1860 the plaintiffs obtained from him an exclusive license for the United States to make and sell the patented chair during the term of the original patent, which expired in December, 1868.

On February 26, 1869, Bernhard Koechling took out letters patent of the United States for "a new and useful improvement in folding chairs," thus described: "This invention relates to an improvement in that class of chairs which are generally used for opera houses, theatres and similar localities. The invention consists in the manner of hanging the seat to the side frames, which is done in such a manner that, when any number of chairs are to be placed in a convex or concave line, the devices for attaching the seat will always answer as they are. In most cases, where the chairs are not placed in a straight line, the holes which are bored through the side frames to receive the pin on which the seat swings must be arranged separately on each chair, to agree with the position of the same on the curved line. By the use of my improvement, I can manufacture or cast any amount of side frames and seats, and all parts can be put together as they are, no matter if the chairs are to be placed into a straight or curved line. Provision is also made that the seats on my chair may be turned up or down at pleasure." The specific claim was for the arrangement of stop-pins, fitting into corresponding mortises, by which the seat is supported both in front and rear of the pintle on which the seat is hung, and of certain iron straps, playing in slots, in the side pieces of the chair, in combination with the back.

The plaintiffs had commenced legal proceedings in the Circuit Court of the United States for the Southern District of New York in the name of Enos G. Allen against Koechling, for making chairs under his patent, on the ground of infringement of Allen's patent. This suit was pending at the expiration of Allen's original patent. In October, 1868 a similar suit by Enos G. Allen against Koechling was pending in the Circuit Court of the United States for the District of Massachusetts, and was on May 7, 1869, dismissed by agreement of counsel by the following entry: "The plaintiff in the above entitled cause, having examined the...