Morse v. O'Reilly

17 F. Cas. 867, 4 Penn. Law J. 75

• Court: U.S. Circuit Court for the District of Eastern Pennsylvania
• Decided: September 15, 1847
• Status: Published

Opinion

KANE, District Judge.

This case came before me, and has been discussed, as a motion for a special injunction at the instance of the proprietors of a patent right. The defendants’ affidavits do not controvert the complainants’ title, but they assert rights under it by force of a contract. The complainants, on the other hand, do not deny the contract, but allege that it has become forfeited by a breach of its provisions. This is the state of the case, as it appears upon the record, and substantially as it has been argued by the counsel on both sides. Essentially, therefore, the application is for the aid of the summary process of the court to enforce a forfeiture. I am not aware that such an application has been sustained by a court of equity in any case; and though called on by me, the counsel for the complainants have not found one. I am warranted in assuming, therefore, that the uniform chancery practice has been against such an exercise of jurisdiction, and this is certainly not a case of which the merits are so obvious as to invite innovations in its favor.

To escape from this, it has been contended that the defendants have incapacitated themselves from performing their contract or compensating for their default. This, however, is only another, and, as it seems to me, a less forcible form of alleging that they have forfeited it. Whether the contract has been violated in its essential terms, or whether it has been made impossible' of execution; equity will relieve, if it can do so without prejudice; but it never enforces anything in the nature of a forfeiture, whether stipulated in the contract or implied from circumstances. Of course I do not refer to conditions precedent. It is a mistake of terms to speak of such conditions as affecting at this time the rights of these parties. Such conditions are at an end, when the right has become vested. They precede the operations of the grant; and the very reason why equity never relieves against them, is that it can only control the exercise of rights, and cannot confer them. The rights of Mr. O’Beilly vested to a certain extent on the execution of the written agreement of the 13th June, 1S45; and they were absolutely fixed when he had “procured a fund sufficient to build a line of one wire from connecting point,” with the seaboasd line “to Harrisburg.” From that time the condition precedent had performed its office, and his rights could be divested only by a forfeiture.

It did not vary the effect of his agreement, that the subject matter of it regarded a patent right. The exclusive rights of a patentee are specially guarded from intrusion; but the contracts which he makes to share them with third persons are interpreted and enforced just as other legal engagements. Nor is anything gained to the complainants, by assimilating the case to one of waste. An injunction is not granted against waste, where the title of the complainant is denied by the answer; and it is refused before answer unless the defendant has had notice of the motion, so as to enable him to make the denial by affidavits. 19 Ves. 147; 17 Ves. 110. In the case before me. the defendants assert that they are in possession under title, and the very issue is whether they are so or not.

I have thus considered the arguments of the counsel, as if the case were really between the proprietors of a patent right on the one side and the defendants on the other. But it is not so. The exhibit referred to in Mr. Kendall’s affidavit which was produced upon the call of the court after the argument had closed, shows that the complainants have not, and had not at the time of filing their bill, any title to that character, so far as regards the subject of contest here. On the 21st of December, 1846, they formally conveyed to Eliphalet Case all their right of construction and using the magnetic telegraph, with all its incidents on the lines embraced in Mr. O’Reilly’s contract and the assignment was recorded in the patent office two days after. The bill was filed on the oth day of January, 1847. I need hardly say that this fact destroys the basis of the complainants’ case. An injunction cannot be awarded at the instance of a stranger, and a patentee, who has assigned away his interest is nothing more.

For these reasons, the motion is refused. I may add, as the request has been made that I should express an opinion upon the merits of the controversy, that I have seen nothing in the facts that have been developed to call for a different conclusion from that to which abstract principles have directed me. Injunction refused.

See Goesele v. Bimeler [Case No. 5,503]; Burr v. Duryea [Id. 2,190]; Perry v. Parker [Id. 11,010].