Walter Wood Mowing Reaping Mach Company v. Skinner

This action was originally brought in the supreme court of the state of New York by Skinner, the defendant in error, for a breach of contract on the part of defendant, (plaintiff in error,) in refusing to account and pay for the use of a certain patented invention, known as an improvement in oil-hole covers for journals, described in letters patent No. 124,092, and reissue of the same, No. 10,064. The case was referred to a referee, who found substantially the following facts in his report:

(1) That the plaintiff and defendant entered into an agreement whereby it was agreed on the part of the plaintiff that defendant should have the exclusive right of using plaintiff's oiler on mowing and reaping machines, and should have the right, but not exclusive, to use it on other machines; and on the part of the defendant, that it would use the oiler on its mowing and reaping machines, and would pay the plaintiff the reasonable value of such use. (2) That defendant proceeded to make and apply to its mowing and reaping machines a device exactly similar to the plaintiff's oiler, except that in the plaintiff's oiler the periphery of the conical head of the spring plug was scalloped, while in the device made and applied to such machines by the defendant such periphery was circular and not scalloped. (3) That the defendant's oiler was a mechanical equivalent for the plaintiff's oiler. (4) That prior to any invention by the plaintiff, an oiler was illustrated and described in Webster's Dictionary, edition of 1869, substantially similar to defendant's oiler, and was represented as fitted to perform the same functions, and in substantially the same way. (5) That the said making and application of defendant's oiler was so done in pursuance of the licanse obtained from the plaintiff by virtue of such agreement and was in fact a use of plaintiff's oiler under such license. (6) That the value for such use was 5 cents for each of 233,081 machines upon which it was applied. Judgement having been entered upon the finding of the referee, an appeal was taken to the court in general term, by which an opinion was rendered and filed affirming the judgment. 47 Hun, 637, mem. An appeal was then taken to the court of appeals, (24 N. E. Rep. 1101, mem.,) by which the judgment was again affirmed, no opinion having been delivered or filed. Thereupon the defendant sued out a writ of error from this court, assigning as error: First. That the claim of the patent, upon which plaintiff sought to recover royaities, was limited to a conical-headed and scalloped spring plug, and that the patent particularly set forth the scalloping of the conical head, the defect in the device improved upon, and how the same was obviated by such scalloping; and that the said courts erred in holding that the claim was not for a scalloped head, but for the combination, with other elements, of a conical head, whether the same was or was not scalloped. Second. That the referee found that the defendant promised to pay the plaintiff the reasonable value of the patented device, and also found that if the claim for the patent was for nothing more than a scalloped conical head, in combination with other elements, the same was worthless, and that lai ntiff ought not to recover; and that said courts erred in holding that, because the claim was substantially for a conical head, whether said head was or was not scalloped, defendant was liable for more than nominal damages. Third. That the state courts also erred in their conclusion that defendant had actually used plaintiff's invention, it being found by the referee that defendant had not used such device, unless the claim of the patent was for a conical-headed spring plug, with or without scallops. Fourth. That such holdings were an erroneous construction of the letters patent, and necessarily involved the legal effect of the patent laws of the United States.

A motion was thereupon made by the defendant in error to dismiss for want of jurisdiction, coupled with a motion to affirm.

Esek Cowen, for plaintiff in error.

James Lansing, for defendant in error.

Mr. Justice Brown, after stating the facts as above, delivered the opinion of the court.