Topliff v. Topliff

• Decision Date: 23 May 1887
• Citation: 30 L.Ed. 1110,7 S.Ct. 1057,122 U.S. 121
• Parties: TOPLIFF and another v. TOPLIFF
• Court: U.S. Supreme Court

122 U.S. 121

7 S.Ct. 1057

30 L.Ed. 1110

TOPLIFF and another v. TOPLIFF.

May 23, 1887.

H. S. Sherman and W. Bakewell, for appellants.

M. D. Leggett, W. W. Boynton, and S. Burke, for appellees.

MATTHEWS, J.

The appellants, complainants below, on the twenty-eighth of February, 1880, filed their bill in equity to restrain the alleged infringement by the defendant of letters patent No. 166,950, granted August 24, 1875, to John A. Topliff, for a new and useful improvement in bow-sockets for buggy-tops. As stated in the specification, 'this invention has relation to bow-sockets for buggy-tops, and consists in placing a filling of wood in the tubes of the bow-sockets to strengthen the same; also in extending the strip of steel which is inserted in the wood filling far enough down to enable it to be welded or otherwise fastened to the slat-iron.'

Among other grounds of defense, the defendant in his answer sets out the following: He alleges that some time prior to the twenty-seventh day of December, 1870, he invented a new and useful invention denominated an improvement in carriage bows,c onsisting, in the main, in constructing the straight part of carriage bows out of tapering tubes made of sheet-iron with soldered seams and lower ends flattened, forming a part of the hinge, in conjunction with the bows made of wood, shaped, and fitted into the upper ends of the tubes; that this invention was secured to him by letters patent dated December 27, 1870, No. 110,513; that this patent was reissued as reissued letters patent No. 9,026, January 6, 1880; and that he obtained another patent, No. 114,885, dated May 16, 1871, for a new and improved carriage bow cover and slat-iron combined; that soon after he invented his first improvement in carriage bows, for which he obtained the patent dated December 27, 1870, and pending the application therefor, a contract in writing was entered into on or about the first day of September, 1870, between himself and the complainants, as follows:

'This agreement, made and concluded this ___ day of _____, A. D. 1870, by and between Isaac N. Topliff, of the first part, and John A. Topliff and George H. Ely, of the second part, witnesseth: (1) The said party of the first part is the sole owner of a certain patent for tubular iron bows used in manufacturing carriage and buggy tops, which patent was issued the ___ day of _____, A. D. _____. Now, in consideration of the agreements of said party of the second part to be by them performed, the said party of the first part hereby gives, grants, sells, and conveys to the said party of the second part the exclusive right of manufacturing and of selling the above-mentioned article throughout the United States for five years from the date of this agreement; it being understood that, at the expiration of five years, the said party of the first part shall have the right to have the above-named articles manufactured at not more than two other places, to be sold at prices adopted by said party of the second part, but in all other respects the rights and privileges of the said party of the second part shall continue during the entire life of the patent. (2) The parties mutually agree that they will share the expense of maintaining the right of the patent against infringements and other patents in the following proportion: The first party to pay one-third, and the second party to pay two-thirds. It is also further agreed that any improvement made on these articles by either party shall be for the mutual benefit of the parties. (3) In consideration of the above grant, the said party of the second part hereby agree to pay to the said party of first part fifteen per cent. on the wholesale selling prices of above-named articles, as royalty on all sold by them, it being understood that these prices shall at all times be settled by mutual agreement between both parties. The said party of the second part further agree that they will advertise thoroughly the above-named article in such ways as may seem best, and do all in their power to introduce and extend the sale of said articles. They also agreed that they will make thim of quality and finish to meet the approbation quality and finish to meet the approvation of said party of the first part.

'In witness whereof the parties haveset their hands and seals to duplicates the day and year first above written.

I. N. TOPLIFF. [Seal.]

'J. A. TOPLIFF. [Seal.]

'GEORGE H. ELY. [Seal.]'

— That, in pursuance of this agreement, the complainants entered upon the manufacture and sale of carriage bows, the defendant being in their employment as traveling salesman, and as such devoted his time largely to the introduction and sale of said carriage bows throughout the United States, and also his time, thought, and attention to making improvements therein, knowledge of which was communicated by him to the complainants from time to time; that some of these improvements made by him were covered by the patent bearing date May 16, 1871; that the business was carried on by the complainants in this was under said contract for more more eight years, to their great gain and profit. The defendant further alleges that, 'after the issuing to him of the last-mentioned letters patent, he made some slight changes and improvements in the manufacture of carriage bows, and communicated the same to said complainants, especially to said John, and requested that in the manufacture of carriage bows under his patent aforesaid, that the said complainants should construct and manufacture them in accordance with his said suggestions and improvements, which improvements were communicated by this defendant to the said complainants on or about the first day of June, 1873; that thereupon his said suggestion and invention was adopted by the said complainants in the manufacture of carriage bows by the said complainants; and afterwards the said John A. Topliff, for the purpose of securing the same to the complainants and to this defendant for their mutual use and benefit, in accordance with the terms of said contract, made application for a patent thereon, and secured the alleged patent in the complainants' bill of complaint described; and this defendant alleges and says that if, in reality, there is anything new or useful embraced in the said letters patent, issued to the said John A. Topliff, that he was and is the true inventor and rightful owner thereof, and that the said John A. Topliff was not and is not the true and original inventor and discoverer thereof; and this defendant alleges that whether said patent, so issued in the name of said complainants, is or is not valid, that he, by the terms of his said contract entered into with said complainants, is entitled to use the same to the same extent that the complainants, are entitled to use the same; that, by the terms of said contract, such right is expressly granted and conveyed to him, and that the complainants have so interpreted said contract, and have had upon their part the free use and benefit of the invention, discovery, and improvement made by this defendant and secured to him by letters patent dated May 16, 1871, as aforesaid, and other considerations therefor, as agreed; and that, relying upon said contract, he communicated to the said complainants the information and instructions in regard to manufacturing under his said patents and other improvements above named, upon which the said John A. Topliff made the application, and secured to the said complainants the letters patent said to be owned by them; and this defendant denies that he has made other use of the letters patent issued to the complainants than such as he was authorized to make by the terms of the contract aforesaid between the complainants and himself.' The defendant further says that he has established a manufactory of carriage bows in the city of Cleveland, but not in any other place or places; and that by the terms of his contract with the complainants he is entitled so to do, and in said business to use the alleged improvements covered by the patent described in the bill.

The case was heard on the pleadings and proofs, when the circuit court being satisfied that under the contract set up in the answer each party had a right to use without the payment of royalty, the patent issued to the complaints, a decree was entered dismissing the bill. The complainants took the present appeal.

It is now contended, on the part of the appellants, (1) that at the time when the bill was filed the contract set up in the answer was not in force, having been previously rescinded by the parties; and (2) that, if the contract is in force, it does not secure to the...