Birkery Manufacturing Co. v. Jones

Toubaítob, J. In March, 1892, the written agreement set out in the complaint in this case was made between Standish on the one side and Birkery and Jones on the other. In it Jones recites that he has agreed to assign to the Birkery Manufacturing Company, a corporation then about to be formed, all his right, title and interest in and to the three inventions mentioned in the agreement. This recited agreement he subsequently carried out. In July, 1892, Standish and Birkery assigned to the plaintiff, the Birkery Manufacturing Company, all their right, title and interest in and under the written agreement aforesaid. In that written contract the defendant Jones agreed that if at any time in the future, during the life of said corporation, he “ should discover or invent any other or further improve [120] ment in the said improvements specified in said letters patent already issued and pending, or any invention or improvement in any other article which said corporation is engaged in manufacturing,” he would assign the same to the corporation, “ so that all right, title and benefit to the same shall enure to said corporation and its successors, without cost or charge of any kind to said corporation for the same.” Subsequently to the making of this contract, during the life of said corporation, and while it was engaged in the manufacture and sale of ball-cock valves, Jones invented a new and useful improvement in ball-cock valves to secure which were issued to him in July, 1896, letters patent of the United States No. 564,249; and the important question in this case is whether this invention of his comes within the obligation of his written agreement afolesaid. In that agreement Jones binds himself to assign to the corporation, (1) “ any other or further improvement in the said improvements specified ” in the three letters patent which have been already assigned to it; (2) “ any invention or improvement in any other article which said corporation is engaged in manufacturing.” The question is whether, under either or both of these clauses, the parties intended to include the subsequent invention made by Jones. It is not enough that they intended to include it, they must also have expressed .that intention in the agreement; but in determining whether they have expressed such an intention, the agreement may be read in the light of the facts and circumstances under which it was made, as disclosed upon the record. Bartholomew v. Muzzy, 61 Conn. 387. When this contract is so read we think it does include the subsequent invention made by Jones which is here in question. Before the contract was made the parties to it had already agreed to form a joint stock corporation for the purpose of manufacturing, among other things, ball-cock valves under the three inventions of Birkery and Jones, and other ball-cock valves. Its capital stock was to be fifteen thousand dollars, of which the parties were to be equal owners. The money for the enterprise was to be furnished by [121] Standish, and the inventions by Birkery and Jones. Under these circumstances it was in the power of Birkery and Jones, by subsequent inventions and improvements, either upon the improvements covered by the patents which they were to assign to the corporation, or upon ball-cocks or other articles which the corporation might be engaged in making, to practically destroy the business of the corporation. This is what Standish evidently feared, and it was mainly to guard against this that the written agreement was executed; indeed this appears to be the sole purpose for which it was executed. For this purpose the parties inserted the two clauses in the agreement last above quoted. It may admit of doubt whether, upon the facts found, the first of these clauses includes the subsequent invention of Jones now in question. Taking a somewhat narrow and technical view of the matter, that invention may not be any “ other or further improvement upon the improvements specified ” in the letters patent which Birkery and Jones agreed to assign to the corporation, and upon that question we express no opinion. But we are of opinion, upon the facts found, that the second of the above quoted clauses does include the Jones patent. That clause includes “ any invention or improvement in any other article which said corporation is engaged in manufacturing.” This means at least any article which the corporation shall be engaged in manufacturing, other than the kind of ball-cock valves described in the three letters patent mentioned in the agreement. Now the finding is explicit that when this action was commenced the plaintiff corporation was engaged in making ball-cock valves which were not made strictly and solely in conformity to either of the three patents mentioned in the agreement, and which also “had additions contained therein derived from subsequent conceptions.” The plain meaning of this is that the ball-cock valves thus described are articles different from, and other than, the ball-cock valves specified in said three letters patent. It is further found that Jones’s invention is an improvement in this article, which the plaintiff corporation was thus engaged in making, and which it was especially [122] organized to make and sell. The finding thus clearly brings the invention of Jones here in question, within the class of inventions which he agreed to assign to the Birkery Manufacturing Company, and we think the trial court erred in holding otherwise. Error and judgment reversed. In this opinion the other judges concurred.