Nesmith v. Calvert

18 F. Cas. 2, 17 Hunt Mer. Mag. 508

• Court: U.S. Circuit Court for the District of Massachusetts
• Decided: October 15, 1845
• Status: Published

Opinion

WOODBURY, Circuit Justice.

• There is a preliminary objection to the jurisdiction of this court in the present case, which must first be considered. It was not made till the argument, after the pleadings to the merits, and after the evidence was taken and published. The ground of it is, that the matter in dispute does not arise out of or under the patent law itself, but under a contract to transfer a patent. I am inclined to think this objection is well founded in respect to the subject-matter, as our jurisdiction is extended in this class of cases so íar as regards the subject-matter only to “all actions, suits, controversies, and cases, arising under any law of the United States, granting or confirming to inventors the exclusive right to their inventions or discoveries,” &c. Act July 4, 1838, § 17 (5 Stat. 124). The present action or controversy arises rather under a contract concerning a patent afterwards to be obtained, than under the patent law itself. But the objection, if good against the jurisdiction of this court, merely on account of the subject-matter, does not impair it over Francis A. Calvert personally, as he belongs to a different state from the complainants; and his interests are several, and capable of being severed from those of the other respondents. The bill then, as against him, both on principle and precedent, gives the court jurisdiction by his residence, even if it does not by its subject. Ward v. Arredondo [Case No. 17,148]. See Shute v. Davies [Id. 12.828]; Cameron v. McRoberts, 3 Wheat [16 U. S.] 591; Strawbridge v. Curtiss, 3 Crunch [7 U. S.] 267. The same reasoning authorizes it to be sustained» as against Gay, who belongs to New Hampshire. But the objection is probably made too late to operate in favor of any of the respondents, as it was not stated till after answers were put ifi to the merits, replications filed, and the evidence published. See D’WoIf v. Rabaud, 1 Pet. [26 U. S.] 476 498; Wood v. Mann [Case No. 17,952]: Harrison v. Urann [Id. 6.146]; Briggs v. French [Id. 1,871]; Skillern’s Ex’rs v. May’s Ex’rs, 6 Cranch [10 U. S.] 207. There seems, also, so far as regards the prayer for an injunction against the use of the patents, to be one ground of jurisdiction given over all the respondents on account of the subject-matter. Under these considerations, the preliminary abjection to our jurisdiction must be overruled.

The next inquiry is, whether the complainants have made out a case justifying :ui interference to compel a specific performance, or an account, or to issue an injunction such as is prayed for. This depends upon the true intent of the original contract between the parties. The chief inquiry is, was that intended to include any thing not actually embraced in the first patent? This is resolved into two subordinate inquiries, ramifications of that. One is, did that contract by its terms, in their proper extent and meaning, look beyond the first patent, and thus mean to include more ? And the next is, if not so, did it include more than was in the patent in consequence of some further improvement being known and contemplated at the time of the first patent, which was not inserted in it, though covered by the contract; being withheld as not matured and being suppressed, and aft.erwards introduced into* the second patent? In either of those events, the complainants are entitled to the- benefit of the improvement, and it ought, UDder the contract, to be conveyed to them; but not otherwise. The clauses in the original agreement, relied on .to sustain the view, that all improvements, then or afterwards to be made by P. A. Calvert, in machines for burring wool, were to be conveyed to the complainants and no other persons, are these. He sells to them the exclusive right to clean wool, Ac. “upon the machines invented or improved by” him, and “for which improvements I am now preparing to obtain letters patent of the United States.” He then covenants to “use all due diligence and effort to mature my said inventions and improvements for cleaning wool, as soon as possible,” and to take out letters patent therefor, and assign the same for cleaning wool to the complainants and to no other persons.

To bear on the construction of this instrument, it is further proved or admitted, that the complainants were manufacturers of woolens, and anxious to obtain possession and control of all the inventions for cleaning wool; that the said P. A. Calvert was an ingenious mechanic, and supposed to be making and able to make great improvements in the machinery for that purpose; that by an agreement made at the same time with that referred to, he was to receive one fourth of the profits from the use of all said improvements by the complainants; and that after-wards, on the 14th of October, 1841, he transferred that one fourth to them for the gross sum of $1000, using language still stronger than in the first deed, and illustrative of it. In this last conveyance, after describing it as transferring his right under the original agreement, he adds, “Also my right to a certain improvement in burring wool,” “to have and to hold” the same, as “described in his specification and caveat, and all my right and claim of whatever nature, under or by virtue of said agreement, and all my improvements in machines for burring wool, and all ifift right to any letters patent which may be obtained for the same.” But the respondent, P. A. Calvert, denies, that either by the first or second deed any intention existed to convey any improvements he might make, except those then contemplated, and afterwards patented in November, 1841. The natural import of the language in the first deed certainly accords with this, rather than a more extended engagement, such as the .complainants infer more particularly from the last deed, looking to all improvements on this subject made by him in all future time. The attendant circumstances of the parties and the subject-matter, so far as bearing on the construction of the agreement in the first deed, would not necessarily en-j large the construction to this extent. They j are all consistent with the idea that improvements then thought of or started were the only subject-matter then contemplated to be transferred. Had the parties contemplated more, and wished to cover all improvements ever made at any future time by P. A. Calvert, explicit language' to that effect would be likely to have been selected, as it would have been equally easy and more natural. Iggulden v. May, 7 East, 237, 241. But in the second deed by F. A. Calvert to the plaintiff, it is equally true there are some expressions that will bear a wider meaning, and they may have been introduced to coyer what was doubtful in the first deed, and in consequence of a' change in the consideration paid to P. A. Calvert, being, perhaps, deemed more advantageous to him; as it was a gross sum at once, instead of a share in remote and uncertain profits. Hence, after referring to the first improvements and the agreement in relation to them, be adds, as a part of the subject-matter conveyed in the second deed, what is susceptible of a construction much broader, viz.: “All my improvements in machines for burring wool, and all my right to any letters patent which may be obtained for the same.” This language might, without any very strained interpretation, be extended to future improvements, as well as those already made, or to a second as well as first patent for them, and especially when it is recollected, that the complainants were desiring to purchase from P. A. Calvert and others all the machines, which might be useful in relation to this subject-matter: that P. A. Calvert was in embarrassed circumstances, and the complainants relieved him by the advances made in October, when the second deed was executed; and that such engagements for the real benefit of inventors as well as the public, ought to be viewed literally when they tend to enable the inventors to continue their efforts, and eventually contribute to the public means and instruments for advancing useful industry and the arts.

But it is not necessary to form a decisive opinion on this point of the case, as I am satisfied on the other point that the balance of the testimony is in favor of the fact, that F. A. Calvert, before maturing his improvements and taking out his patent in 1S41, had in contemplation, and had considered the further improvement patented in 1S43. It would seem, however, that either, because he feared infringing Crane’s rights, or had not time to finish the improvement in 1841, or entertained doubts of its superiority, or wished to reserve it for himself, he took out the patent of 1841, without including the same in it. It is not averred, nor is it necessary to infer, that he did this fraudulently. But that the principle of it had occurred to him in 1841, and had been in some degree 'tested, is quite clear, notwithstanding his denial, if we credit the testimony of William W. Calvert his brother, and of Mr. Crane. It is true, that William W. Calvert, though a brother, was a rival, and once had interests and feelings opposed to Francis A. Calvert. But he has no such interests at this time. So Crane was once interested in the patent. But neither of them seem now to be incompetent; and their manner of testifying is distinct and credible. Indeed, besides Crane’s denial of any interest in it himself, the complainants offer now to show by a deed, that he had parted with all he possessed before giving his deposition, and put that in now as a documentary exhibit, though the evidence has been published. 2 Daniell, Ch. Prac. (Perk. Ed.) 1025. These witnesses testify to facts, which show distinctly, that the differences between the first patent, in November, 1841, and the second one in June, 1843, consisted chiefly in this— that the first had the angular tooth guard; and the latter dispensed with it, by using a receiver beneath, and bringing the saw cylinder nearer to the fine-toothed comb cylinder. Crane swears, that as early as the spring of 1841, Francis A. Calvert said the machine “could work without it,” that is, without the angular tooth guard. And whenever he said that, a caution was given to • him that he might then encroach on Crane’s and William W. Calvert’s patent, which seemed to deter him from then maturing such a change. Again, as to the angular tooth guard, Crane says, “I don’t recollect that he said what he should use as a substitute, but he said he could do without it.” The idea then had occurred to him, and the matter had been discussed, before his contracts with the complainants. William W. Calvert testifies, that the angular tooth guard could be dispensed with by bringing the cylinders nearer together and using a receiver, and such was the course of experiments tried in April, .1842, by his brother and himself. This was the second step in relation to the subject, — a series of experiments testing what he had thought of and talked of previous to hi* conveyances. He seems to have been deterred from resorting to this change in the spring of 1841, for some reason or other, and probably in part from threats of Crane that it would encroach on his rights; but that it was contemplated can hardly admit of doubt on examining the evidence. When he after-wards, in 1842, proceeded to develope this idea in a machine, he seems to have been conscious that it did not differ materially in principle from what he had patented in 1841, and should have been included in that; and hence he proposed to the complainants to buy back from them the patent of that year. The change was rather a further progress in the same machine, ■ than inventing a new one; was maturing its form without introducing any new principle — was merely withdrawing the angular tooth, and substituting for it the receiver, and a nearer position of the saw cylinder to the fine-tooth comb cylinder. He told Crane that the machine would work without the angular teeth, before he obtained his first patent; and his brother came to that same conclusion with him; but the precise substitute, if any, or the change throughout, which he had in his mind, was not developed to them in detail, if it was matured, till 1842. But it being admitted, that in the winter of 1841 he had not matured any part of his invention — that his plans were but partially explained to any one — that the plaintiffs then, in advance of their completion and a patent, bought and he conveyed all of his improvements, such as they would be when matured —It was a natural form and design of the contract to reach every thing then in embryo in his mind on this subject; and after such a contract, it is equitable and just that it should pass the perfection or progress at any future day of any improvement in these machines, which he had thought of in 1841, and should at some future day complete. Under these circumstances, as the improvement in 1842 of what was patented in 1841, is proved in point of fact to have been only a further development of ideas entertained in 1841 on the same subject, we see no just reason why it should not be considered as assigned and granted to the complainants as was stipulated to be done in February as well as October, 1841, in terms covering at least all improvements he had then contrived.

It is hardly necessary to go much into various other points pressed by the counsel on the one side or the other. The bill distinctly avers that the improvements patented in 1843 were contemplated by said Francis A. Calvert in 1841, and hence the proof on this point is admissible, and the probata thus correspond, as they should, with the allegata. Story, Bq. PI. § 264; The Chusan [Case No. 2,717]; 18 Ves. 312. I do not by this remark mean to be understood as expressing an opinion, that no evidence can be put in which is not alleged or specifically described in the bill; but there must be in the bill allegations broad enough to coyer any evidence offered, before it becomes admissible. After that, confessions, or declarations, or documents, or cumulative facts are admissible to support any general allegations to which they apply; and such general allegations are alone often sufficient to render the introduction of such evidence proper. Smith v. Burn-ham [Case No. 13.01S]; Jenkins v. Eldredge [Id. 7,2CG]. Nor is it necessary to examine in detail another question which the counsel have discussed — whether a demand should be made for a conveyance of the patent of 1S41 or 1843, before Francis A. Calvert is bound to convey them. For in all views of the deed and the testimony, he must be considered as haring covenanted unconditionally to transfer them when obtained. "He has long since received the consideration for doing it, and he now refuses absolutely to assign or grant the use of the last patent of 1843, which is a neglect of duty and violation of his contract sufficient to sustain the bill. Believing, for the reasons assigned, that he is bound to do it, so far as regards its use for cleaning wool, I think the prayers in the bill against F. A. Calvert ought to be granted; and the use of both patents for that purpose be assigned to the complainants, — conferring on them an exclusive license to use both in that way, and an injunction issue also to all the respondents, as all have interfered in making, or using, or vending these machines, to do so no more, for cleaning wool; and that they render an account of whatever has hitherto been received for the same beyond the expenses incurred. Decree for plaintiffs.