Paul Steam System Co. v. Paul

• Decision Date: 20 April 1904
• Docket Number: 1,759.
• Parties: PAUL STEAM SYSTEM CO. v. PAUL.
• Court: U.S. District Court — District of Massachusetts

129 F. 757

PAUL STEAM SYSTEM CO. v. PAUL.

No. 1,759.

United States Circuit Court, D. Massachusetts.

April 20, 1904

Coolidge & Hight and Ernest Howard Hunter, for complainant.

Kenyon & Kenyon, for defendant.

HALE District Judge.

This is a suit in equity brought by the complainant to compel the defendant to assign to it United States letters patent No 604,355, No. 647,023, and No. 647,024, all of said letters patent having been granted to the defendant; also to assign to the complainant an application for United States letters patent No. 16,808, filed by said defendant in the Patent Office May 15, 1900, and now pending there.

The case is now before the court upon a motion for a preliminary injunction to restrain the defendant from assigning the patents and the application named in the bill of complaint and from constructing, using, or selling any of the improvements described therein. The bill alleges that prior to October 5, 1894, the defendant and one William O Skiffington were owners of certain inventions and improvements relating to steam systems and devices for removing the water of condensation from the cylinders of paper drying machines, and of certain other inventions relating to the same subject, and that, being in possession of these patents and inventions, they caused the complainant corporation to be incorporated for the purpose of acquiring all their interest in the said patents and inventions; that on October 5, 1894, an agreement in writing was entered into by the complainant corporation with the defendant and with said William P. Skiffington, whereby the complainant corporation acquired all the interest of the defendant and of Skiffington in the inventions relating to said subject. This agreement is made a part of the bill, and sets out that the defendant and said Skiffington, parties of the first part, are the owners of certain inventions relating to steam heating systems and devices for removing the water of condensation from the cylinders of paper drying machines. The agreement enumerates the patents, and sets out further that the said defendant 'owns or controls certain other inventions relating to steam heating systems, for which no applications have yet been prepared. ' The agreement provides in the first clause that Paul and Skiffington agree to assign and transfer to the company 'the entire right, title and interest in and to the above-recited inventions, applications and letters patent, including all the inventions in steam heating systems and devices for removing the water of condensation from the cylinders of paper drying machines heretofore made and contemplated by the said Andrew G. Paul. ' The agreement further provides, which for the purposes of this case it is unnecessary to enumerate. The fourth clause of the agreement is as follows:

'Fourth. The said Andrew G. Paul agrees that if he shall make any further improvement or improvements on the above-mentioned inventions while he is in the employment of the party of the second part or during a period of two years, after the termination of such employment, the party of the second part shall have the option to purchase or own the said improvement or improvements and patent or patents that may be granted therefor, both in the United States and in foreign countries, the said party of the second part to pay in consideration for said improvement or improvements and patent or patents merely the expenses connected with the securing of said United States and foreign patents. It is understood and agreed that the said party of the second part shall elect whether it shall purchase the said improvement or improvements referred to in this clause and the United States and foreign patents for the same before any application for a patent has been filed for said improvement or improvements in the United States or any foreign country; and if prior to the filing of any such application in the United States or any foreign country the party of the second part shall not elect to purchase and own the said improvement or improvements, then the said Andrew G. Paul shall retain title to the said improvement or improvements free and clear of any claim thereto on the part of the party of the second part, and shall have the right to apply for and obtain in his own name and for his own benefit a patent or patents for any such improvement or improvements both in the United States and foreign countries.'

It appears further from the bill and from the testimony in the case that prior to ...