Miller Saw-Trimmer Co. v. Cheshire

• Decision Date: 21 July 1922
• Citation: Miller Saw-Trimmer Co. v. Cheshire, 177 Wis. 354, 189 N.W. 465 (Wis. 1922)
• Parties: MILLER SAW-TRIMMER CO. v. CHESHIRE ET AL.
• Court: Wisconsin Supreme Court

177 Wis. 354

189 N.W. 465

MILLER SAW-TRIMMER CO.

v.CHESHIRE ET AL.

Supreme Court of Wisconsin.

June 22, 1922.

Dissenting Opinion July 21, 1922.

Appeal from Circuit Court, Milwaukee County; Oscar M. Fritz, Judge.

Suit by the Miller Saw-Trimmer Company, a corporation, against Edward Cheshire and others, for specific performance of a contract. From an order denying plaintiff's motion for a new trial, after judgment for defendants was affirmed, plaintiff appeals. Affirmed.

Eschweiler, J., Vinje, C. J., and Doerfler, J., dissenting.

This case was once before this court and was reported in 172 Wis. 278, 178 N. W. 855. We shall not restate the facts stated there, but reference is made to the former opinion, and the statement of facts here will be regarded as an addition to the former opinion so far as the statement of facts is concerned. Upon the remittitur of the record to the circuit court for Milwaukee county, the plaintiff petitioned the circuit court for a new trial upon the ground of newly discovered evidence. The material portion of the petition is as follows:

“II. That, in the original proceedings in said cause, plaintiff had to rely upon the disclosure of the contents of the two pending applications aforesaid made to it by the defendants therein, inasmuch as, under the rules of the United States Patent Office, all pending applications for patents are kept in the secret archives of the Patent Office, and are accessible only to the applicants, their assignees, or their duly appointed attorneys of record; that, accordingly in the proceedings before trial in said cause, the said defendants were duly served with a writ of subpœna duces tecum issued at plaintiff's instance, and were required by the exigenciesof the said writ to produce ‘all applications for letters patent or any drafts or copies of such’ relating to or describing ‘* * * any mechanism or device intended or adapted for use in the feeding or handling of paper’; also ‘all written descriptions * * * and other material or memoranda * * * bearing upon or relating to any inventions * * * made, had, or required by the defendant Edward Cheshire * * * relating to the feeding or handling of paper’; and in response to said subpœna produced what purported to be a copy of said application, executed March 5, 1918, and the same was marked plaintiff's Exhibit No. 2 (ultimately marked at the trial as Plaintiff's Exhibit No. 17); that at no time in the course of said Cheshire's examination before trial, and at no time during the trial, did it appear that any steps had been taken by the applicant Cheshire, or his assignees or attorneys, or by the officials of the Patent Office, changing or altering, in any respect, or separating into divisions said application so as to change or modify its condition as filed, and plaintiff and its counsel were led to believe, and did believe, that said application was and continued to be at the time of the trial in the same condition in which it appeared by the copy thereof furnished by the defendants as aforesaid; that, in like manner, when during the trial the defendants were called upon to produce the second application of Cheshire serial No. 329976, filed October 11, 1919, they produced an alleged copy thereof which was introduced and marked Plaintiff's Exhibit No. 18, and plaintiff and its counsel were led to believe, and did believe, that said application was then, and at all times continued to be, in the condition shown by said copy, and that it had not been altered, changed, or acted upon by the Patent Office. A copy of said subpœna duces tecum issued to said Cheshire is hereunto annexed and marked Plaintiff's Exhibit A and made a part hereof.

III. That plaintiff avers and charges the fact to be that the aforesaid conduct of the defendants in producing a part only of said application, Plaintiff's Exhibit 17, instead of the whole of said application and all papers and documents connected therewith and forming a part thereof, in response to the exigency of the writ of subpœna duces tecum served upon them as aforesaid, commanding and requiring the production of ‘all applications for letters patent, or any drafts or copies of such,’ etc., relating to paper feeding and handling mechanism, willfully and intentionally withheld and suppressed evidence material and relevant to the issues in this cause to which the plaintiff was justly entitled, such conduct constituting a fraud upon the plaintiff, an attempt to defeat the administration of justice, and a virtual contempt of the process of this court.

IV. That during the course of the trial in the circuit court, and in the arguments submitted in its behalf, both orally and in briefs, at the conclusion of the trial, and in the arguments submitted in its behalf, orally and by briefs, in the Supreme Court, plaintiff consistently and persistently contended that the printing presses disclosed in the aforesaid two applications of Cheshire were susceptible of subdivision into parts or groups of mechanisms, easily identified one from the other, and that the paper feeding and handling mechanism disclosed in said applications were separate inventions, capable of being segregated and made the subject of separate and independent applications and of separate patents, without reference to their attachment to any particular kind of printing press or impression devices with which they might be associated; that, on the other hand, during said trial and at all of said hearings, in both this court and in the Supreme Court, defendants with equal persistence contended for the integrality of the machines of each of such applications and for the unitary character of the inventions disclosed in said applications, and for the impossibility of segregating and separately applying for and obtaining patents on the paper feeding and handling mechanisms of the machines of those applications.

V. That recently, to wit, on or about the 6th day of November, 1920, the defendant Edward Cheshire advised the plaintiff that he had made and entered into a contract with the defendant Simplex Machinery & Tool Company wherein and whereby, in consideration, inter alia, of the assignment to said defendant Simplex Machinery & Tool Company of the said Cheshire invention afterwards disclosed in Plaintiff's Exhibit No. 17 aforesaid, said defendant Simplex Machinery & Tool Company agreed to pay to said Cheshire, in addition to other considerations therein mentioned, a royalty of 2 1/2 per cent. of the selling price of all printing machines embodying the subject-matter of said invention; that said Cheshire further stated that, in violation of said contract, the said defendant Milwaukee Automatic Printing Press Company, which had succeeded to the rights of Simplex Machinery & Tool Company, without the consent of said Cheshire, and against his protest, was about to close a contract with Miehle Printing Press & Manufacturing Company of Chicago (hereinafter called the Miehle Company), under which contract the exclusive rights to manufacture, use, and sell said Cheshire inventions disclosed in said applications, Plaintiff's Exhibit No. 17 and Plaintiff's Exhibit No. 18, were to be transferred to said Miehle Company in such manner as to defeat the right of said Cheshire to his said royalty of 2 1/2 per cent. in respect of printing machines manufactured and put out by said Miehle Company pursuant to said proposed contract; that said Cheshire represented that he feared that such action might be taken in his applications, Plaintiff's Exhibit No. 17 and Plaintiff's Exhibit No. 18, controlled, as such applications in fact were, by Messrs. Wilkinson and Huxley, who were also the attorneys and of counsel for the Miehle Company, as would emasculate them and render them not fully protective of the inventions involved in them, and thereby affect the royalties due him, said Cheshire, under said contract with the said defendant Simplex Machinery & Tool Company and the proposed contract between the defendants Simplex Machinery & Tool Company and Milwaukee Automatic Printing Press Company and the said Miehle Company; that thereupon a representative of the plaintiff company, Mr. Charles G. Cope, went to Washington with the said Cheshire, and, upon the said Cheshire's demand, as of right, to see said applications, inspection of said applications was permitted by the Patent Office officials and copies taken of the same, which copies are now in plaintiff's possession and are hereunto annexed, marked Plaintiff's Exhibit B and Plaintiff's Exhibit C, respectively; that an examination of the whole record of said applications discloses the fact that, in the case of the application Plaintiff's Exhibit B (of which Plaintiff's Exhibit No. 17 offered at the trial constitutes a part, and only a part), the first official action thereupon, made on the 7th of June, 1918, consisted of a letter from the Commissioner of Patents requiring a division of said application, said letter stating on page 2 thereof, among other things, the following:

‘Division is required between the following groups of claims, each group relating to an independent invention, not correlated with the remainder of the claims: Group A, comprising claims 1-54, 61-100, and 118-124, relating to mechanism for carrying the sheet to and from the printing mechanism and various subcombinations. * * * Group B, comprising claims 55-60, relating to table elevating devices of general application. * * * Group C, comprising claims 101-107, relating to an interrupter for a printing cylinder. The type of interrupter used, or whether one is used at all, does not affect the remainder of the mechanism. * * * Group D, comprising claims 108-116, relating to a traveling cylinder printing press, which has an opposing movement given to the cylinder and type bed. * * * Group E, comprising claim 117, relating to a mounting for an inking roller. * * * No action on the merits will be given until the...