Miller Saw-Trimmer Co. v. Cheshire

178 N.W. 855, 172 Wis. 278, 1920 Wisc. LEXIS 225
CourtWisconsin Supreme Court
DecidedSeptember 25, 1920
StatusPublished
Cited by7 cases

This text of 178 N.W. 855 (Miller Saw-Trimmer Co. v. Cheshire) is published on Counsel Stack Legal Research, covering Wisconsin Supreme Court primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Miller Saw-Trimmer Co. v. Cheshire, 178 N.W. 855, 172 Wis. 278, 1920 Wisc. LEXIS 225 (Wis. 1920).

Opinions

[290]*290The following opinion was filed July 3, 1920:

RoseNBerry, J.

The trial court held, and we think correctly, that no estoppel arose as against the plaintiff by, reason of the transactions had between the plaintiff and Cheshire at the time Cheshire went to Pittsburg to exhibit his new invention to the plaintiff. While it was argued strenuoüsly by the defendants that the plaintiff is estopped, certainly no estoppel arose upon the facts as found by the trial court, and the findings in relation to estoppel are amply sustained by the evidence.

The trial court found that the wooden model exhibited by Cheshire to the plaintiff did not disclose any new invention reláting' to the feeding and handling of paper, and that Cheshire did not inform the plaintiff that he intended to apply to the cylinder press any invention made by him relating to the feeding and handling of paper; that none of the essential matters constituting the new inventions and' patentable improvements in paper-feeding and handling devices were exemplified by the model exhibited to the plaintiff. Upon these facts it requires no discussion to show that no estoppel arose as against the plaintiff. Cheshire and the other defendants knew that \i-Cheshire’s new invention was one relating to paper-feeding and handling devices it would be claimed by the plaintiff under its contract; and in proceeding to develop Cheshire’s new invention the defendants proceeded at their peril so far as the rights of the plaintiff were concerned. Littlefield v. Perry, 21 Wall. (88 U. S.) 205; Printing & Numerical R. Co. v. Sampson, 44 L. J. Ch. 705; Aspinwall M. Co. v. Gill, 32 Fed. 697; Consolidated R. E. L. & E. Co. v. U. S. L. & H. Co. 77 N. J. Eq. 285, 78 Atl. 684.

The defendants attack the contract as amended on the ground that it is void as against public policy, mainly upon the ground that it was not qualified by place or circumstance, and extending as it does by its terms until Cheshire [291]*291shall reach the age of sixty-five years, it will operate to deprive the public of the behefit of the exercise of his inventive" genius in this field. We shall not discuss this question in detail. By its terms the contract is limited to that period during which the assigned patent would extend, and by its terms the contract is limited as to particular kinds of inventions and does not, deprive the public of the benefit of Cheshire’s inventive genius in any excepting the specified field. We see nothing in the contract' which in any way contravenes public policy. Aspinwall M. Co. v. Gill, 32 Fed. 697; Westinghouse A. B. Co. v. Chicago B. & M. Co. 85 Fed. 786; Littlefield v. Perry, 21 Wall. (88 U. S.) 205; Atlas P. Co. v. Eames (Mich.) 173 N. W. 344.

The trial court was of the opinion that, although the contract was valid and the plaintiff was not estopped, the plaintiff was nevertheless not entitled'to have , the contract specifically enforced, because under the facts and circumstances it would be unconscionable and inequitable to decree specific performance of the contract dated January 14, 1911. We cannot state more briefly than in the language of the trial court the facts' upon which this conclusion was básed’:

“1st. In the first place, the plaintiff necessarily relies upon the enlargement, by the contract of January 14,’ 1911, of Cheshire’s obligation to assign future inventions, as basis for its claim that it is entitled to an assignment of the new inventions, asserted by Cheshire in claims No. 1 to 100 and No. 118 to 124, in application No. 224,426, and in claims numbered 34 to 54, in application No. 329,976.
“As consideration for that enlargement of Cheshire’s obligation, only $10 were paid to him. No other consideration was paid or promised him,. and no additional obligation, forbearance, or detriment was incurred by the Miller Saw-Trimmer Company as consideration for that • enlargement of Cheshire’s obligation. Hence, at the outset the court is confronted with the fact that the enlarged rights which plaintiff now seeks to have specifically enforced in equity are founded upon a new consideration of only $10.
[292]*292“2d. Next, it is. important to. note that neither under the-contract of January '14, 1911, no.r under the_ contract of November 22, 1910, was Cheshire entitled to, continue in the employment of the plaintiff, or its predecessors in interest, for any definite period of time. Since November „24, 1913, he has not been in the: employment of the plaintiff, or its predecessor, and has not received anything from the plaintiff, or its predecessor, excepting. the. balance of the sum o.f $7,000 which was. payable as. royalties on account of the patents originally assigned by him,,'and which was completely paid by September 15,, 1916.
“3d. On the other hand, the new inventions, the ownership of which is now in dispute, were neither conceived nor developed until after Cheshire -had ceased to. b.e in the employment of the. plaintiff and its predecessors in interest, and to receive any compensation whatsoever from those sources.
“4th. Neither the plaintiff, nor its predecessors in interest, ever promised to compensate Cheshire for any new invention which he might make after the termination of his employment by them. ■
“5th. Likewise, the contract fails to reserve to Cheshire any interest in the future inventions by way of ownership by him of an undivided interest therein, or o,f future compensation to him, as royalties or annuities,, during the use of such inventions by the plaintiff', or of ownership, or the privilege of1 acquisition, by him, of stock in a corporation which was to own, or enjoy the fruits of, such future inventions.
“6th. Cheshire's inventions after November 24, 1913, relate primarily to the printing means of his new cylinder press. The invention of the new paper-feeding and handling devices was but incidental to his invention of those printing means. Those paper-feeding and handling devices were necessary to render the press automatic and commercially operative. They are inapplicable for practical use on any other type of press without modification and special -adaptation. And the plaintiff does not claim to be entitled to such of the new inventions as relate solely to the printing and not to the feeding and handling of paper.
“7th. Those new inventions are not necessary for the completion into a practically operative machine, of the paper-feeding and handling devices manufactured by the plaintiff for use on the Gordon press.
[293]*293“8th. Further, Cheshire first offered, the, plaintiff a. reasonable opportunity to acqúire an interest in the new inventions relating to the press itself, and only sought to interest his present codefendants after the plaintiff failed to accept that offer. Since then, Cheshire and his codefendants, in good faith, have undertaken and proceeded with the development and perfection of that press, including the paper-feeding and handling devices which were necessary for automatic operation, and for those purposes they expended about $33,000 up to the time of the commencement of this action.”

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Bluebook (online)
178 N.W. 855, 172 Wis. 278, 1920 Wisc. LEXIS 225, Counsel Stack Legal Research, https://law.counselstack.com/opinion/miller-saw-trimmer-co-v-cheshire-wis-1920.