Nichols v. Marsh

• Decision Date: 10 June 1886
• Citation: Nichols v. Marsh, 61 Mich. 509, 28 N. W. 699 (Mich. 1886)
• Court: Michigan Supreme Court
• Parties: NICHOLS and others v. MARSH and others. [1]

28 N.W. 699

61 Mich. 509

NICHOLS and others v. MARSH and others. ^[1]

Supreme Court of Michigan

June 10, 1886

Appeal from Calhoun.

Charles F. Burton, for complainants.

R.A Parker, for defendants and appellants.

CAMPBELL C.J.

This bill was filed to compel defendants to convey to complainants, who are a corporation engaged in engine building at Battle Creek, the right to use a certain improvement, consisting of a reversing apparatus, for which defendants claim to own a patent, and for the principal part of which it is admitted they are entitled to have one. In the summer of 1880 complainants were engaged in building engines intended for farm work, and self-propelling; and, as the season of fairs was approaching, they were preparing one to exhibit. Defendant Marsh, who is a skilled mechanic, and had worked more or less for complainants, had devised what he regarded as a great improvement in reversing gear, and was anxious to have it put to a practical test in such a way as to bring it before the public. He showed it to Mr. Nichols, the active man of the concern in that department, and desired to be allowed to fit it to the engine which was to be exhibited. Mr. Nichols thought favorably of the device, and was willing to co-operate. The change required to adapt the engine to the new reversing device made necessary some changes in the steam-chest, and some other alterations. All this was done in the shop, partly by the shop-hands, and, when completed, the engine was painted, and put in order for the fairs. Marsh was sent with it, in company with complainant's agent, and was paid wages and expenses. The engine was exhibited at several places to a large number of people, and shown at work, and consequently Marsh and his associates, the other defendants, who became interested with him, received orders and made sales of the right to use the device to a considerable amount.

When the arrangement was made with complainants, Marsh had applied for a patent, which was subsequently allowed by the patent-office. The device, as so patented in the outset, did not contain certain arrangements found necessary for its perfect working, and these were added while work was going on to fit out the engine. There is a dispute whether these improvements were invented by Marsh, or by Mr. Hoag, one of complainant's workmen, who claims to have noticed the defect in the apparatus while working at it, and to have devised the remedy. Hoag obtained a patent for it. Marsh afterwards applied for one, and, in the conflict concerning interference, the Washington officials decided in his favor, and complainants, as Hoag's assignees, filed a bill in equity in the supreme court of the District of Columbia to have the matter judicially settled.

Complainants claim that when they allowed Marsh to adapt his device to their engine, and furnished him aid in so doing in the shop and in the exhibition, it was agreed that they should have the right to use it, without further compensation, on their own engines. This is the agreement in issue here. Defendants deny any such arrangement, and claim that complainants have no right whatever to use it. Complainants began at once to fit out their engines with the device, and the testimony shows clearly that defendants were enabled to get their invention adopted by the representation that complainants had adopted it. In addition to denying the right of complainants defendants also rely on the fact that they, subsequently to the allowance of the patent, filed a bill against complainants in the circuit court of the United States for the Eastern district of Michigan, charging an infringement and complainants set up in defense the invalidity of the patent, and put the invention in issue, but did not set up license. This suit was defeated on the ground that the patent had never been issued and signed and sealed by the proper officer. 15 F. 914. An appeal was taken by defendants, and also by complainants, to the United States supreme court, where it is...