Starling v. St. Paul Plow Works

• Decision Date: 10 October 1887
• Citation: 32 F. 290
• Parties: STARLING v. ST. PAUL PLOW-WORKS.
• Court: U.S. District Court — District of Minnesota

32 F. 290

STARLING v. ST. PAUL PLOW-WORKS.

United States Circuit Court, D. Minnesota.

October 10, 1887

Frackelton & Careins, for plaintiff.

John B & W. H. Sanborn, for defendant.

NELSON J.

A motion for a new trial is made by defendant upon the following grounds: 'First, on account of accident and surprise which ordinary prudence could not have guarded against; second, on the ground that the decision is not justified by the evidence, material to the petitioner, which it could not with reasonable diligence have discovered and produced at the trial; fourth, on account of error in law occurring at the trial, and excepted to by the petitioner ' The trial was before the court without a jury, and was very thorough. Many questions arose, and, if error was committed, it was in allowing the defendant to show want of novelty and patentability of the plaintiff's plow. The action was brought upon a contract in which the defendant became a licensee to manufacture and sell the plaintiff's invention called the 'Starling Plow,' on payment of a royalty for each and every 'Starling Plow' manufactured and sold. A breach of the contract is alleged and a recovery sought and obtained for the amount of royalties upon plows sold and not accounted for and paid the defendant. If the defendant manufactured plows called by a different name, but substantially the same as defendant's invention, invading his rights under the patent, or using devices claimed in the plaintiff's patent, it is a breach of the contract if defendant fails to pay the royalty therein provided, and on a repudiation of the contract by the licensee, the licensor and patentee can either sue for royalties unpaid or for infringement. Cohn v. Railroad Co., 3 Ban. & A. 572, and cases cited. The election to sue for a breach of the contract is made in this case, and sustained. The court decided the defendant did infringe, and gave judgment.

I dismiss all of the reasons assigned for a new trial with one exception, and will briefly consider that one, viz 'Newly-discovered evidence, material for the petitioner, which it could not with reasonable diligence have discovered and produced at the trial. ' This evidence is a patent, No. 127,878, issued June 11, 1872, to William G. Haslup, assignor, for an 'improvement in plows.' If the newly-discovered evidence which is submitted would not change the result of the verdict and judgment, it is well settled that a...