Kelly v. Porter

• Decision Date: 05 February 1883
• Citation: 17 F. 519
• Court: United States Circuit Court, District of California
• Parties: KELLY v. PORTER and others. [1]

17 F. 519

KELLY v. PORTER and others. ^[1]

United States Circuit Court, D. California.

February 5, 1883

The contract construed is as follows:

'Whereas Mr. P. Kelly, of the city and county of San Francisco, and state of California, has applied for and is now endeavoring to obtain from the United States government a patent on or for the inserting of an elastic behind the ankle of short-legged bootees or gaiter boots, of which said Kelly claims to be the originator and inventor, together with all his style and cut, as in his plans and specifications accompanying said application set forth; and whereas Porter, Oppenheimer, Slessinger & Co., of the city, county and state aforesaid, are desirous of manufacturing and selling man's, youths', and boys' goods, and inserting an elastic behind the ankle, as aforesaid, therefore the said P. Kelly hereby covenants and agrees to give and grant to the said Porter, Oppenheimer, Slessinger & Co. the exclusive right and privilege of manufacturing and selling the aforesaid goods under any patent he may obtain by or through his applications as aforesaid, in the state and territories of California, Oregon, Nevada, Montana, and Colorado, Idaho, Washington, and Utah; but the said Kelly hereby reserves the right to manufacture said goods for retail purposes in his own store. And the said Porter, Oppenheimer, Slessinger & Co. hereby covenant and agree to pay to the said P. Kelly the sum of three dollars per dozen (of twelve pairs) as royalty for the privilege of manufacturing and selling said goods, as aforesaid, for all other kinds of goods made and sold by them as aforesaid. But it is hereby agreed that no royalty shall be paid to said P. Kelly for any goods manufactured by Porter, Oppenheimer, Slessinger & Co. for the said P. Kelly. And it is further agreed that any goods made and sold as aforesaid by Porter, Oppenheimer, Slessinger & Co. shall be sold by them on the conditions that the party purchasing the same shall not sell such goods at retail in the city and county of San Francisco, except by the said P. Kelly. And the said P. Kelly further covenants and agrees that for and in consideration of the royalty paid to him as aforesaid, that he, the said Kelly, will protect the said Porter, Oppenheimer, Slessinger & Co. in the rights hereby granted, as aforesaid, against any and all persons during the term of the application for a patent as aforesaid, and after he shall have obtained a patent from the United States government as aforesaid. And it is further agreed by and between the parties hereto that if the said P. Kelly from any cause fails to obtain a patent as aforesaid, or does not protect said goods as aforesaid, then, in that event, the said Porter, Oppenheimer, Slessinger & Co. shall not pay unto the said P. Kelly any sum or royalty for the privilege hereby granted. And if the claims by Kelly for a patent are rejected by the United States government, Porter, Oppenheimer, Slessinger & Co. shall not pay unto the said Kelly any royalty from and after the date of the rejection of his claims for a patent, as aforesaid, are rejected by the United States government, then this agreement shall cease and become null and void. And it is further agreed, by and between the parties hereto, that if the said P. Kelly obtains a patent as aforesaid, then, and in that event, the royalty of one dollar and fifth cents, to be paid as aforesaid, may be changed in any manner that the parties hereto may agree upon.

'PORTER, OPPENHEIMER, SLESSINGER & CO. (Seal.) 'P. KELLY. (Seal.)

'Signed, sealed, and delivered in presence of JOHN HEIN.

'San Francisco, March 8, 1879.'

Wheaton & Harpham, for complainant.

Boone & Miller, for defendants.

SAWYER J., (orally.)

This is a demurrer to a bill in equity to enjoin the infringement of a patent. The bill was originally filed without setting out a contract, which existed between the parties; and defendants by plea set it up as a defense. The complainant then amended his bill, and set out the contract. The defendants rely upon this contract, claiming that it is a license, and that the alleged infringement of the complainant's patent is merely manufacturing and selling the patented articles under and by authority of that license.

The complainant insists under the bill, as now drawn, that it appears that the patent, as issued, is not covered by the license, because there was a change made in the claims of the original application for the patent, so...