Johnson v. Computing Scale Co.

• Decision Date: 22 July 1905
• Citation: 139 F. 339
• Parties: JOHNSON v. COMPUTING SCALE CO.
• Court: U.S. District Court — Northern District of New York

139 F. 339

JOHNSON v. COMPUTING SCALE CO.

United States Circuit Court, N.D. New York.

July 22, 1905

Brown Carlisle & McCartin, for plaintiff.

Kernan & Kernan, for defendant.

RAY District Judge.

Plaintiff is a resident and citizen of the state of New York. Defendant is a corporation organized under and pursuant to the laws of the state of Ohio, having its principal place of business in that state. At the time of the commencement of this action it owned no property, had no place of business, and was not transacting business in the state of New York. On or about January 25, 1905, Edward Canby, the vice president of the defendant, was temporarily in the city and state of New York on private business which had no connection with defendant or its business or property, and while in said state he transacted no business for or connected with defendant. The summons and complaint in this action, being a summons and complaint in an action in the Supreme Court of the state of New York, venue laid in the county of Jefferson, N.Y., was served on said Canby on said day while he was thus temporarily in the city of New York. That is the only service of the summons or complaint on the defendant. That it is insufficient and confers no jurisdiction is well settled by the decisions of the Supreme Court of the United States. Goldey v. Morning News, 156 U.S. 518, 15 Sup.Ct. 559, 39 L.Ed. 517; Conley v. Mathieson Alkali Works, 190 U.S. 406, 25 Sup.Ct. 728, 47 L.Ed. 1113; St. Clair v Cox, 106 U.S. 350, 1 Sup.Ct. 354, 27 L.Ed. 222; Remington v. Central Pac. R. Co. (S.C.U.S. No. 460 decided April 17, 1905) 25 Sup.Ct. 577, 49 L.Ed. 959. The complaint showing the diverse citizenship before stated alleges as its causes of action (1) the plaintiff's ownership of certain letters patent for a calculating attachment for weighing scales; (2) the making of a contract January 25, 1897, between plaintiff and defendant, the material parts of which read:

'Memorandum of agreement entered into this day by and between The Computing Scale Co. of Dayton, Ohio and Eli B. Johnson, of Chaumont, N.Y. witnesseth;

'The said E. B. Johnson claiming to be the sole owner of Letters Patent of the U.S. #514,471, for a calculating attachment for weighing scales issued to himself, February 13th, 1894, and the said The Computing Scale Co. being desirous of manufacturing and vending the said patented article throughout the United States and territories, the said E. B Johnson and the said The Computing Scale Co. agree as follows:

'The said E. B. Johnson agrees to grant unto the said The Computing Scale Co. the exclusive right to manufacture and vend the said patented article throughout the United States and territories during the life of the patent of said patented article under the terms, conditions and stipulations hereinafter mentioned. He agrees that any improvement he may make to the said patented article may be used by the said The Computing Scale Co. without changing the terms or conditions of this agreement. He grants unto the said The Computing Scale Co. the right to bring suit for infringement of the said patented article, and all other rights, the same as if the said patent #514,471 was the exclusive property of the said The Computing Scale Co. so long as the conditions and terms hereinafter mentioned are fully complied with.

'The said, The Computing Scale Company, on its part agrees to at once place the said patented article in the hands of its experimental department for the purpose of perfecting the mechanism thereof, to push the sale of the scale when perfected throughout the United States and territories to promptly bring suit against infringers of said patented article, to pay to the said E. B. Johnson a bonus of two hundred & fifty ($250.00) dollars upon the signing of this agreement, to pay a royalty of twenty-five cents on each and every scale it manufactures and sells of said patented article.

'It agrees that it will not make less than one thousand of the said patented articles in any one year, or in lieu of which to pay to the said E. B. Johnson the sum of two hundred and fifty dollars per annum during the existence of this contract. It agrees that any improvement it may make on the said patented article shall not impair the rights of the said E. B. Johnson, even though it may cause said improvements to be patented, so long as the primary and foundation principles in the said patented article are retained.

'It is further mutually agreed that after the said The Computing Scale Co. shall have paid to the said E. B. Johnson the total sum of five thousand dollars, the said patent #514,471 shall become the exclusive property of the said The Computing Scale Co. and all of the right, title and interest of the said E. B. Johnson in said patent shall pass to the said The Computing Scale Co. It is further mutually agreed that if the royalties paid to the said E. B. Johnson after the first year of this agreement shall not amount to five hundred dollars annually, the said E. B. Johnson shall have the option to declare the contract void.

'It is further mutually agreed that should the said The Computing Scale Co. be unable to profitably sell and place upon the market the said patented article, it may at the end of the year declare this agreement void, provided it shall have fully complied with this agreement up to the date of such declaration.'

The complaint also alleges:

'That thereafter, and on the 2d day of February, 1897, at the request of the defendant, the plaintiff executed an assignment of said patent to the said defendant, as follows:

"Whereas Eli B. Johnson, of Chaumont, State of New York, did obtain letters patent of the United States of America, for certain Improvements in Calculating Attachments for Weighing Scales, dated the 15th day of February, 1894, and numbered 514,471.

"And Whereas, The Computing Scale Company of Dayton, State of Ohio, is desirous of acquiring an interest therein:

"Now therefore for and in consideration of the sum of two hundred and fifty dollars ($250) to me in hand paid, the receipt whereof is hereby acknowledged and for and in consideration of a sum of not less than five hundred dollars ($500) to be paid me annually until a total sum of five thousand dollars ($5,000) shall have been paid, as per an agreement between the parties hereunto dated January 25, 1897, I do hereby sell and assign to the said The Computing Scale Company, its successors and assigns the entire right, title and interest in and to said invention and patent together with the right to sue for past infringement, and to collect all damages and profits for past infringements, and I hereby covenant with the said The Computing Scale Company that I am the exclusive owner of the interest herein conveyed and have good right to sell and convey the same. It is understood that this assignment is made subject to the provisions of the aforesaid agreement.

"Witness my hand this 2nd day of February, 1897. E. B. Johnson.

E. B. Johnson

"Witness

"F. A. Duford.'

'That ever since the issuing of the patent as aforesaid plaintiff has been, and now is, the sole owner thereof, subject to the rights of the defendant as contained in the contract and assignment hereinbefore mentioned. That after the execution of said contract the defendant proceeded to manufacture computing scales under the contract of January 25, 1897, and, as this plaintiff is informed and believes, ever since has been and still continues to manufacture and sell scales under said contract, and are now engaged in manufacturing and selling the same. That the plaintiff has repeatedly demanded of the defendant that they should furnish him with a statement as to the number of scales manufactured by them for the purpose of determining the amount to which he is entitled, but defendant has refused, and now refuses, to furnish him with any statement showing the number of machines manufactured under said agreement, and plaintiff has been unable to ascertain the exact number of machines...