Leslie v. Standard Sewing-Mach. Co.

WOODS, Circuit Judge, after making the foregoing statement, delivered the opinion of the court. The essential point of the court’s charge to the jury wa-s the direction to find the issues for the defendant, the other parts being simply explanatory of the reasons for that action; and the exceptions saved and the specification of error, being both aimed directly at that point, cannot be said to be indefinite or uncertain. The objection to the bill of exceptions has better foundation, but should not prevail. Beyond doubt, and for obvious reasons, it is the rule that, if the bill of exceptions does not contain all the evidence, the question whether a general verdict or finding of the lower court was supported by the evidence will not be considered; and the same rule has often been applied when the question was whether a peremptory instruction, directing a verdict for one party or the other, was justified. The latter question, however, it is evident, is or may be essentially different from the former; and, when all reasons for applying the rule fail, it should not be given effect. The question whether a verdict or finding was supported by the evidence obviously cannot be answered, if the bill of exceptions leaves it uncertain what the entire evidence was. It must always be presumed in such a case that any defect in the evidence presented would be removed by a full statement, but, while every presumption must be indulged in favor of a judgment, it should be a reasonable presumption, not inconsistent with, what is shown in the record; and when a find [829] ing has been directed in favor of the defendant in a case, and the bili of exceptions, though not purporting to contain all the evidence, contains a statement of evidence in behalf of the plaintiff sufficient on every issue to have justified a verdict in his favor, the rule manifestly ought not to apply, especially if it be apparent that the action of the court was the insult oí a misapprehension of the bearing of the proof adduced. It is plain that there was such an error in this case. Upon the evidence set out in the bill of exceptions, the plaintiff was entitled to recover on one paragraph of the declaration a stipulated sum for each machine manufactured by the defendant, if those machines involved “any of the essential principles covered by the patents.” The question was taken from the jury because in the judgment of the court, as stated in its charge, the claims of each of the patents “are restrictive by the terms of the patent, and, in view of the clearly-shown prior art, to such an extent that the doctrine of mechanical equivalents cannot be invoked in this case.” That was to treat the ease as if there were no contract between the parties, and the question were simply of infringement by a wrongdoer. In Eureka Co. v. Bailey Co., 11 Wall. 488, 20 L. Ed. 209, there was a contract by which a licensee “was to pay a royalty of fifty cents for every machine manufactured by it in which the patent should he used”; and, in regard to the denial there made that the machines manufactured and sold were covered by the plaintiff’s patent, the court declared itself “not at all satisfied that in equity it can be permitted to set up this defense, while it makes no attempt by cross bill, or even in the answer, to show that the agreements were obtained by fraud, surprise, or imposition.” The present case is at law. and the question is not one of equity, but of strict contract right. The contract is explicit, and, in our opinion, excludes any inquiry into the prior art for the purpose of limiting the scope of the patents. It contains the express stipulation that Leslie “shall not he held to guaranty the validity of said patents, or any of them, or to protect said second party against infringement thereof, * * * hut all royalties hereunder shall cease upon the date of a decree of any court of competent jurisdiction declaring the invalidity of said patent or patents”; aud it is further provided that the “second party shall not be obliged to make rotary shuttle sewing machines like any model that has been or may be constructed or settled upon as a standard, but it may from time to time make such changes as may seem to it expedient, but no such alteration or change shall relieve the second parly from the payment of royalties as hereinafter provided, so long as the machine made by it involves any of the essential principles covered by the patent of the first party.” This last expression clearly means that changes or alterations which should introduce only equivalents of the original elements should not relieve the second party from the payment of the stipulated royalties, and, like the other provision, that all royalties should cease on the date; of a decree declaring the invalidity of the patents, is inconsisteni with the proposition of the court that the doctrine of mechanical equivalents could not be invoiced in the case. To the same effect in our former opinion we said: [830] “Leslie was unwilling to guaranty the validity of his patented inventions, or to protect the company in their use, should they prove to infringe upon another’s protected rights. This risk was assumed by the company, — upon the condition, however, that the payment of royalty should cease when a competent court should declare the invalidity of the invention.” It is unnecessary to consider whether, upon other counts of the declaration, the case should have been submitted to the jury. The judgment below is reversed, with instruction to grant a new trial.