Frey v. Iver Johnson Sporting Goods Co.

Rugg, C. J. This is an action for the breach of a written contract. The contract recited that the plaintiff had “invented a certain new and useful improvement in anti-skidding devices ... as set forth and described in” certain specifications preparatory to obtaining letters patent. The defendant then agreed “upon the final allowance of said patent” to pay to the plaintiff $1,000. This action is to recover damages for breach of this agreement. An assignment of the invention from the plaintiff to the defendant was executed contemporaneously with the agreement. A patent was finally issued, which was not coextensive with the invention as claimed. Various claims of novelty made by the plaintiff were rejected by the patent office, but it is apparent from the evidence that the patent solicitors representing the plaintiff narrowed the claims from time to time only as they were disallowed by the officials of the patent office. It appears from the evidence that the patent as issued covered all of the original claims of the plaintiff which the patent office has recognized as patentable. The first question presented is whether the ruling was correct to the effect that the proffer of the patent issued was a compliance by the plaintiff with his agreement. The contract of assignment, [218] although describing the invention by reference and otherwise, contained no warranties as to its novelty. The assignment from the plaintiff to the defendant was of all his right, title and interest in and to the invention. The subject-matter of the contract is fully set out. It is the invention for which the plaintiff had filed an application for a patent. It was described at length in papers referred to in the agreement and was known to both parties. There was no concealment or misunderstanding about its nature. The contract contains no agreement, representation or undertaking on the part of the plaintiff that the patent to be issued shall be coextensive with the claims set forth in his specifications, nor that the whole invention is patentable. The substance of the agreement is that the invention, whatever its novelty may ultimately turn out to be, is assigned, and if any patent issues covering the whole or any part of the claims, as originally set out and by implication as subsequently amended, then the subsequent payment provided for shall be made. It follows that there was no question of fact upon this branch of the case. There being no stipulation as to the extent of patent which might issue, the contention of the defendant is unsound, to the effect that the question should have been submitted to the jury, whether the patent was substantially the same as that set out in the specifications. The proffer of evidence of admissions by the plaintiff that the patent did not include the important elements of his invention was properly excluded, for it had no bearing upon the issue of law, which was the meaning of the contract, nor upon the issue of fact, which was as stated by the judge in his charge whether there had been a breach of contract on the part of the plaintiff such as prevented him from recovery. No contention was raised at the trial, either by the pleadings, requests for rulings or statements of claim by counsel, that the plaintiff by fraudulent collusion with others had caused the patent to be narrower than the invention as set forth in the specifications. Hence this point although faintly argued before us is not open. We do not intimate that the evidence excluded with its setting in the case would have been enough, even if this question had been seasonably presented. By the contract the plaintiff assigned to the defendant any improvements which he might make within the scope of the patent. The question whether improvements had been made and not sub [219] mitted to the defendant as required by the contract was passed upon by the jury. The charge of the judge in this respect was not open to exception. In substance, it required the jury to be able to find some improvement made by the plaintiff and not turned over to the defendant. The distinction between a mere creature of the mind which would not constitute an improvement, and a thought worked into a feasible physical entity, which would constitute an improvement, was correct. The defendant’s requests for rulings were all properly refused. Some of them, to the effect that the plaintiff was not entitled to recover, manifestly could not have been given. However sound others of them may have been as abstract propositions of law, they were not applicable to the terms of the contract as we have interpreted it. It is not necessary to examine them in detail, because they were either inapplicable or unsound in law. Exceptions overruled.