Miller Saw-Trimmer Co. v. Cheshire

[290] The 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] shall 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] “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] “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.” In our judgment the trial court was in erromin holding that the contract of January 14, 1911, was a separate and distinct contract and that the sole consideration therefor was the $10 as stated in the contract itself. We are of the opinion that the contract of January 14, 1911, must be considered in connection with the contract of November 22, 1910. It is apparent from the face of the contracts that the agreement of January 14, 1911, was executed for the purpose of carrying out and expressing the original intention of the parties at the time the November contract was entered into. Reece F. M. Co. v. Fenwick, 140 Fed. 287; Mississippi G. Co. v. Franzen, 143 Fed. 501. So construed the consideration is not inadequate, and if Cheshire’s new invention is within the terms of the contract there is nothing inequitable or unconscionable in compelling him to carry out his agreement. Where, as here, an inventor enters into a contract to assign and convey future inventions upon an adequate consideration, there being no fraud, duress, or overreaching by the opposite party, both parties having entered into the contract in good faith and for their mutual benefit, the nrere fact that subsequent developments show that the inventor should have made a better bargain for himself, or-that the profits of the business have been exceptionally and unexpectedly large, does not affect the situation of the parties. The validity of the contract and the right of the parties to its enforcement is to be considered as of the date of the contract. Neither Cheshire nor the plaintiff’s predecessors in title were in any way certain that Cheshire’s [294] invention would ever prove commercially successful. If, therefore, Cheshire’s new invention was within the contract of November 22, 1910, as amended by the memorandum of January 14, 1911, the plaintiff was entitled to have its con/tract specifically performed. This brings us to the consideration of the question, Is Cheshire’s new invention within the terms of the contract as amended'? The language is: “The assignor hereby promises and agrees to sell, assign, transfer, and set over to the assignee the entire right, title, and interest in and to such inventions as relate to the feeding or handling of paper which he may hereafter make .or acquire during the term of seventeen (17) years from the date of this instrument,” etc. It is difficult to put upon paper an adequate description of Cheshire’s new invention. Cheshire’s original invention constituted what would ordinarily be known and described as an attachment to an already existing press. It could be put upon a hand-fed press, swung away from it so that the press might be fed by hand, and would facilitate making the press ready for a job. We take from the brief of counsel a detailed description of this machine, which with the accompanying photographs (Exhibits 19 and 20) will make Cheshire’s first invention understandable: “The plaintiff’s machine will readily be understood from the . . . photographs, Exhibits 19 and 20, of which Exhibit 19 shows the machine ready to print, and Exhibit 20 shows it with a section of the feeding and handling mechanism swung away from the press portion to facilitate making the press ready for a job, or to permit hand feeding. The press portion of the machine consists of a rocking type-supporting member ‘A,’ called the bed. It is pivoted at ‘B,’ so as to swing on a long radius. The paper-supporting member ‘C,’ taking the form of a flat platen, rocks also, the bed and the platen rocking towards each other (coming into close contact under pressure) to perform the printing operation, and subsequently rocking away from each other so that the sheets may be fed to, and taken away from, ■ the [295] platen. When the platen rocks away from the bed to receive a sheet, it comes to a nearly horizontal position of rest, to give time for a sheet to be placed upon it. This much of the machine, is, as stated above, purchased from the Chandler & Price Company, and suitably modified for the reception of the paper-feeding and handling mechanism now to be described. “The paper-feeding and handling mechanism includes a stock table, ‘D,’ upon which the pile, ‘E/ of sheets is placed, a large number of sheets being placed, in one stack, on this table ready for feeding. Above the stock table, ‘D,’ is a sheet-separating element, which includes a number of pneumatic suction feet, ‘F,’ having holes in their lower sides to which suction is applied to cause a sheet of paper to attach itself thereto. With the stack of sheets on the table, the suction feet, ‘F,’ usually three in number, descend upon the pile and engage the top of the first sheet near its front edge, suction being applied to the feet at that time. The application of the suction to the feet causes the top sheet of the pile to attach itself thereto, whereupon the suction feet rise a short distance, carrying 'with them the top sheet attached. In this way the top sheet is individually released, by the sheet-separating element, from the balance of the pile, raised a short distance, and held in a position ready to be carried forward to the platen, ‘C.’ “An intermediate element carries the separated sheet' forward to the platen. This intermediate element includes a cross-bar, ‘H,’ carrying mechanically actuated feed grippers, ‘G,’ which come towards the sheet in its separated and suspended condition, grasp the sheet, and thereafter move out over the platen, ‘C,’ sliding out in a plane parallel with the latter. .There is a stop or abutment, ‘K,’ on the platen, in the path of the advancing sheet, against which the edge of the sheet strikes. When these feed grippers, ‘G,’ originally seize the sheet, they hold it firmly. After they have advanced part of the way across the platen, however, their . grip on the sheet relaxes; and afterwards they only hold the sheet impositively, or loosely, so that when the sheet strikes the abutment, ‘K,’ it is enabled to be pushed out from the grippers, the grippers thereafter moving on their way, leaving the sheet engaged with the abutment, ‘K,’ on the platen, ‘C.’ In the position of the parts shown in Exhibit 19 the [296] grippers have received the sheet from the separating position and have brought it part way out onto the platen. They have loosened their grip on the sheet and are just about to cause the sheet to strike the abutment, ‘K’ (a registering fork), and thereby be removed from the grippers and left on the platen. After this has been accomplished, the feed grippers retire out of the way and the platen moves forward to its printing position. “After the sheet has thus been deposited on the platen and the grippers have moved back out of the way, the platen, ‘C/ rocks forward to meet the advancing bed, ‘A,’ and the printing operation is performed. After the printing operation (as the platen begins to rock backward to receive another sheet), delivery grippers, ‘L,’ engage the face of the platen, entering between it and the rear edge of the sheet, and seize the sheet by this rear edge. After thus seizing the sheet they swing back over a delivery table. When they arrive over the delivery table, the delivery grippers, ‘L,’ open and the sheet falls onto the delivery table, the printed sheets thus being stacked, in a pile, ‘M,’ on the delivery table. Automatically actuated joggers, ‘N,’ are provided on the delivery table, which joggers intermittently strike the sides of the stack of printed sheets, bringing it into a neat and orderly pile ready for shipment.. “It will be understood that as the sheets are withdrawn one by one, in feeding, from the top of the pile ‘E,’ the height of the pile diminishes. With this separating device, it is a requisite that the top of the pile shall remain at a substantially constant level. To provide for this, the stock table, ‘D,’ is equipped with an automatic mechanism which raises it intermittently on each cycle of the press; that is, the table rises a given increment on each operation’ of the press to compensate for the diminished height of the pile due to the previous sheet being taken away. “It has been stated that the sheet, upon being fed forward by the feed grippers, ‘G,’ strikes an abutment, ‘K,’ on the platen, ‘C.’ This abutment takes the form of a spring fork, into the jaws of which the sheet is placed by the grippers; so that when the platen, ‘C,’ begins to move towards the bed for printing, the sheet is lying on the platen engaged in the jaws of this fork, TC.’ As the platen rocks forward to the printing position, the fork, ‘K,’ is given a movement [297] in the arc of a circle in the same plane as the surface of the platen, causing the sheet to be brought downwardly and sidewise. The downward movement brings the sheet against two stops, or end register pins, ‘J,’ on the platen, and the sidewise movement brings it against a side-stop or side-register pin on the platen (not seen in the photographs). The sheet is thus left in engagement with these two sets of stops, the end stops and the side stop, and is thus accurately placed on the platen so that the printing will be correctly placed on the paper. In other words, an accurate register is obtained in this way. “In case a sheet should not be fed to the platen, were no mechanism provided to prevent it, the .type on the bed would make an impression upon the surface of the platen, and the ink thus placed on the platen would be printed on the back of the succeeding sheets when they were fed again. To prevent this, a device is provided for causing the bed movement to be modified whenever a sheet is not fed, the modification of the bed movement having the result that the bed does not quite reach the platen, instead of pressing against it, as it does in the ordinary printing operation. The press portion is provided with a hand lever, ‘O,’ by which this device may be manually actuated. The paper-feeding and handling mechanism includes automatic means for operating this ‘throw-out device,’ as it is usually termed. The automatic mechanism is governed by the presence or absence of vacuum in the suction feet, ‘F.’ In other words, when a sheet is raised by the suction feet, ‘F,’ this sheet seals the air openings in the bottom of the feet; consequently there is a vacuum in the suction feet. When no sheet is lifted by the suction feet, air can be drawn in through the holes in the bottom; consequently there is no vacuum in the suction feet. The automatic mechanism for actuating the throw-out device is so arranged that when there is a vacuum at the feet, ‘F,’ the throw-out device will not be actuated; but when there is not a vacuum in the feet, the throw-out mechanism will be actuated. When, therefore, the machine misses feeding-a sheet, the throw-out mechanism will automatically operate and prevent damage from resulting. “A section of. the paper-feeding and handling mechanism is made to swing vertically about a pivot, as seen in Exhibit 20; so that it may be easily put out of the way to permit an [298] operator to feed the press by hand if desired, and to permit of the platen being easily made ready for printing a job. By ‘made ready’ is meant the usual operations which must be performed on the platen preparatory to printing a job. “The suction feet, ‘F,’ are of a very especial construction, at their bottom faces, to insure the lifting of one sheet and prevent the lifting of more than one sheet. To further facilitate proper separation, the feeder mechanism is provided with a blower which blows air between the sheets while they are still piled at ‘E,’ from the front edges. The effect of the blowing in of air is to cause the top sheets to be afloat with a volume of air between them so that -they are more easily separated.” Cheshire’s new invention is described as follows: “The defendant’s most recent construction of machine ... . will be understood from the photographs, Exhibits 21, 22, and 23. Exhibit 21 shows the machine in the position in which the platen is about to make its upward movement for printing a sheet, and then a sheet is there just about to be, or just has been, grasped by the grippers on the platen. Exhibit 22 shows the platen when it has completed the printing of a sheet, and has arrived at its topmost position, the printed sheet being about to be taken from it by- the delivery grippers. Exhibit 23 shows chiefly the feeding and handling mechanism, and displays the grippers of the platen and the top face of the transfer board, with the platen part way between its upper and lower position. “The defendant’s machine includes a press portion and a paper-feeding and handling mechanism. The press portion comprises a vertically moving type supporting member, or bed, ‘A,’ and a vertically moving rolling impression member, or cylindrical platen, ‘B,’ which latter is pressed against the bed during the movements of'the two parts. The movement of the platen, ‘B,’ is in the opposite direction to the movement of the bed, ‘A,’ that is, as the bed, ‘A,’ moves downward, the platen, ‘B,’ moves upward, and, rolling over the type, effects the printing impression. The cylindrical platen, ‘B,’ is provided with a number of grippers, ‘J’ (Exhibit 23), for seizing the sheet to be printed and retaining it on the impression member during the printing operation. “The paper-feeding and handling mechanism includes a [299] stock table, C, upon which the paper to be printed is piled in the form of a stack, from which the sheets are separated and removed one by one by a sheet-separating element. The sheet-separating element includes a pair of pneumatic suc: tion feet, ‘D,’ which are caused to periodically descend upon the top sheet of the pile, and, having suction applied to them, cause the top sheet to adhere to their faces. When the suction feet, ‘D,’ subsequently rise, they carry with them the top sheet of the pile, thereby separating- it from the balance of the paper. The suction feet, ‘D,’ are carried upon a crossbar, ‘E,’ which connects the top of a pair of long pivoted arms, ‘F,’ so that upon these arms, ‘F,’ being swung' about their pivots, the suction feet are brought forward towards the press portion, into the position shown in Exhibit 22. The suction -feet, ‘D,’ move from the position-shown in Exhibit 23 (where they are just about to have suction applied to them) down onto the top sheet of the pile of paper. Ity reason of the suction the-top sheet attaches itself to the feet, and, when the feet rise again back into the position shown in Exhibit 23, the top sheet is attached to them and thereby separated from the balance of the pile, and raised therefrom. After this has taken place, the arms, ‘F,’ swing forward, carrying the suction feet over to an intermediate element for transferring it to the platen, ‘B.’ “The intermediate element for transferring the sheet from the sheet-separating element to the cylindrical platen, ‘B,’ takes the form of a ‘transfer board,’ ‘G/ which is carried by the frame of the platen, ‘B,’ so as to move vertically therewith. The transfer board, ‘G,’ has a vacuum chamber beneath it and has suction holes, ‘H,’ in its upper face. When the suction feet, swinging forward from the pile, bring the sheet over the transfer board, ‘G,’ the suction is cut off from the feet, thereby enabling the sheet to drop onto the' support, and suction is simultaneously applied through the holes, ‘H,’ thus causing the sheet immediately to adhere to the transfer board, ‘G.’ In other words, the suction feet, ‘D,’ swing forward over the intermediate element, or transfer board; ‘G,’ and drop the sheet, owing to the suction being released; and the sheet is then immediately seized by the transfer board, by réason of vacuum applied through the holes; ‘H,’ in the face of the latter. When the sheet is thus seized by the intermediate member or transfer board, ‘G,’ [300] the platen, ‘B,’ is in its uppermost position and the sheet is close to the platen grippers, ‘J.’ As the platen, ‘B,’ descends, the transfer board, ‘G,’ descends with it, the sheet being held in place, during the first part of the descent, by the vacuum at the holes, ‘H.’ As the transfer board 'moves downward, and after it has moved part of the way, suction is cut off from the holes, ‘H,’ so that the sheet is then only held by its weight upon the support. By this time the platen grippers, ‘J,’ have opened ready to have the sheet fed against them. During the latter part of its downward movement the transfer board is given a forward movement relatively to the platen. This forward movement has the effect of pushing the front edge of the sheet against the stems of the platen grippers, ‘J,’ by which grippers, the sheet is then seized. These operations have occurred by the '-time the platen, 'B,’ has reached its lowermost position arid is just ready to rise for the printing operation. As the platen, ‘B,’ rises (the bed, ‘A,’ at the same time descending), it rolls upon the type of the bed, and, in rolling, draws the sheet off from the transfer board, ‘G,’ and wraps it upon itself. The sheet is thus rolled against the type by the impression member, and the printing impression is made. “When the platen, ‘B,’ reaches its uppermost position and the printing impression has been completed, delivery grippers, ‘L,’ swing forward and engage the edge of the sheet, between the platen grippers, ‘J/ and grasp the sheet, removing' it from the platen grippers, which latter are opened just at this time. The delivery grippers, ‘L,’ then swing back to a position over the delivery table, where they drop the sheet upon the printed sheets previously delivered. Jogging devices are provided for stacking the sheets into a neat pile. “With the defendant’s separating device, it is a requisite that the top of the pile of sheets to be fed shall be maintained at a substantially constant level. To this end, the stock table, ‘C,’ is provided with automatic mechanisms and devices for raising it intermittently, as the paper is removed. “It has been stated that the transfer board, ‘G,’ has a forward movement, relative to the platen, to move the sheet into the platen grippers, ‘J.’ It also has a sidewise movement (the two blending as one diagonal movement), to effect a side register. The forward movement pushes the [301] sheet against the stems of the platen grippers, ‘J,’ thus putting it into accurately correct position endwise.' The sidewise movement pushes the sheet against a side-register stop, ‘K’ (Exhibits 21, 22), thus putting it into accurately correct position sidewise.' The sheet is.thus accurately registered, whereafter the platen grippers, ‘J,’ close on it. “‘The press portion is provided with a throw-out device, by means of which the cylindrical platen, ‘B,’ is prevented •from rotating, during the printing portion of the cycle, when it is desired to prevent a printing impression being effected between the type and the platen impression surface. The paper-feeding and handling mechanism provides automatic means for operating this throw-out device, so as to actuate it whenever a sheet is not properly fed. This automatic means is controlled by the presence or absence of vacuum at the holes, ‘H,’ of the transfer table, ‘G.’ In other words, when a sheet is on the transfer table, this sheet seals the holes, ‘H,’ and a vacuum- is consequently maintained. When no sheet is present on the transfer table, the holes, ‘H,’ are' free, and there is no vacuum thereat. In the latter case, the automatic mechanism will actuate the throwout device. When, therefore, the machine does not feed a sheet, the throw-out mechanism will automatically operate and prevent damage .from resulting. “The stock table and its associated parts are made to swing away from the press portion'to permit access to the press portion for make-ready or hand feeding. To the same end, the transfer table, ‘G,’ is made readily removable from the platen frame, -and the cross-bar, ‘E,’ carrying the suction feet, is made readily removable from the arms, ‘F.’ “The suction feet, ‘D,’ are of a complex construction, at their bottom faces, to insure the lifting of one sheet and prevent the lifting of more than one sheet. To further facilitate separation, blowers are provided for blowing air between the top sheets of the pile, at their front edges.” In addition to the evidence, exhibits, and model, and briefs and arguments of counsel, the court has had the benefit of a view of the plaintiff’s machine as well as of the defendant’s machine in operation. Is Cheshire’s new invention (defendant’s machine) an invention which relates to [302] the feeding or handling of paper, or is it an automatic cylinder printing press ? It cannot be denied that indispensable parts of Cheshire’s printing press are mechanisms for feeding sheets of paper from piles of stock and delivering the printed sheets from the cylinder to a'receiving pile. - It is undisputed that those parts of the Cheshire press which relate to the feeding and handling of paper are incapable of practical use in connection with any other form of printing press or upon any other machine. We, however, do not regard this as controlling, but it is a fact entitled to weight in arriving at a determination as to the nature and character of the invention. The Cheshire press, while it embodies features found in other cylinder presses, contains, as the description shows, many modifications and inventions, and it is admitted ,that these modifications arid inventions are indispensably necessary to its operation. Those parts of the invention which have to do with the feeding and handling of paper are not operative for any purpose unless used in the machine of which they are a constituent part. Cylinder pfesses automatically fed were well known to the art lqng. before Cheshire brought out his invention. If Cheshire’s new invention be taken apart and each operation therein be considered by itself, it might well be said that some of the mechanism relates to the feeding and handling of paper, but in determining whether or not the invention as a whole relates to the feeding and handling of paper, as that term was used in the contract, or whether it is an automatically fed cylinder printing press, the invention must be considered as a unit. It cannot be considered as a-series of correlated inventions some of which relate to one thing arid some to another. Cheshire. invented a cylinder printing press, automatically .fed.’ The completed operation of the machine is properly described as printing. No unit.of the machine feeds or handles- paper. In the complete operation of the invention a-sheet of paper is taken from one table,, passed into the machine and printed, and then deposited upon an [303] other table. It does by itself what a hand-fed press does when operated by a pressman; that is, it performs the work of printing. The machine, therefore, is not one for feeding and handling paper, but for printing. Not being an invention for the feeding and handling of paper it is not covered by the amended contract. We are governed in arriving at this determination not by the language used by Cheshire in his application for letters patent,- or any other collateral fact or circumstance, but base our conclusion upon the fact that the invention as a whole relates not to the- feeding and handling of paper, but to printing. We are not here concerned with the question of whether or not the use of some of the elements of this machine constitutes an infringement upon the plaintiff’s rights under the letters patent assigned to its predecessors by Cheshire. That is a question that is not within the issues made by the plead? ings, and is an .entirely different question. The terms of the contract do not embrace a printing machine merely be? cause-as a component part of it there are devices within it which, when operating with the machine as a whole,, feed and handle paper. Plaintiff’s cause of action rests upon the amended contract. Its right to the relief sought depends upon whether Cheshire’s new invention is covered by the terms of that contract. Not being within its terms, the plaintiff is not entitled to the relief prayed for in its complaint. -The judgment of the trial court as to the issues raised by the complaint should therefore be affirmed. Logically.it would seem ■to follow that the defendant is entitled to have its rights to Cheshire’s new, invention confirmed in it pursuant to the prayer of its counterclaim. This would be true if all of plaintiff’s rights were embraced in the terms of the amended contract; but it is the assignee of several letters patent assigned to it and its predecessors by CheshireTo award defendants judgment as prayed for in the counterclaim would amount to an adjudication that Cheshire’s new invention [304] was not an infringement upon any of the patents now owned by the plaintiff. This question was not litigated. We feel that the record does not disclose facts justifying an adjudication upon that question. The denial of relief to the plaintiff is in effect a judicial confirmation to the defendants of its rights in Cheshire’s new invention, so far as the issues litigated are concerned. While the defendant is not entitled to judgment as prayed for in its counterclaim, it should not be foreclosed by judgment of dismissal upon the merits. Full justice will be done if the counterclaim be dismissed without prejudice. The judgment must therefore be modified so that the defendants’ counterclaim shall be dismissed without prejudice. By the Court. — The judgment appealed from is affirmed as to the issues raised by the plaintiff’s complaint. As to the defendants’ counterclaim, the judgment of dismissal is modified as indicated in the opinion, and as so modified is affirmed. The following opinion was filed July 12, 1920: