Kroegher v. McConway & Torley Co. , 149 Pa. 444 ( 1892 )

Opinion by

Mb. Justice Mitchell,

A judge is not bound to answer in detail every point that ingenious counsel may put to him, nor even to affirm correct legal propositions in the exact phrase asked for. As was said by the present Chief Justice in Com. v. McManus, 143 Pa. 64: “ If the law applicable to his ease is plainly, fully, and accurately stated, he has no cause of complaint though the judge choose to express it in his own words.” If this is the rule in trials for murder, a fortiori it must be the rule in merely civil issues.

In the present case fourteen points were presented by counsel for defendant, most of them sharply drawn and of some intricacy. The judge formally refused them all, without reading them to the jury, and gave the latter the law applicable to the case as a connected whole in a general charge. This was entirely within his discretion, and defendant has no cause of complaint if the charge contained nothing erroneous, and omitted nothing favorable to defendant which the points properly called for.

The action was assumpsit for the use of an article obtained by defendant from plaintiff. The fact that the article was patented, or claimed to be, was entirely immaterial to the case as presented and tried, and bore upon it only incidentally. No question of the validity of the patent, or of infringement arose.

The undisputed facts were that plaintiff had invented a method of making car-coupler hooks of wrought iron, for which he had obtained a patent, that McConway procured from him the right to make hooks of the kind, and that McConway’s firm, and subsequently the McConway & Torley Co., the defendant, did in fact make such hooks from the very patterns and dies procured from plaintiff. The disputed facts were, whether a price for the use of his invention had been agreed upon by plaintiff and McConway; and whether the agreement, whatever it was, between McConway and plaintiff, had been adopted by defendant, or by McConway for it with its authority.

Two other points were made in defence, and are assigned for error here : 1, that the hooks made were not such as were covered by plaintiff’s patent, and 2, that the plaintiff declared upon a contract to give McConway the exclusive right to make the hooks, and the evidence did not show that the right was exclusive.

On the case thus outlined the learned judge instructed the jury specifically that plaintiff must prove a contract as the basis of the action, explaining that a suit for infringement was not within the jurisdiction of the court; that he must further prove an adoption of the contract by defendant, and an agreement as to the royalty, or the value of it on quantum valebat. Without going over it in detail it is sufficient to say that there was evidence to justify the jury in finding all these points in plaintiff’s favor, and the law in relation to them was clearly and correctly laid down for their guidance.

Upon the point that the article made by defendant was not the same as the article covered by the patent, the learned judge instructed the jury that if the articles were substantially alike in form and made under the assumption that they were made under the patent, or under the permission obtained from the plaintiff, it would he sufficient. This was quite as favorable to the defendant as it was entitled to ask. Whether the patent was followed strictly or not was entirely immaterial. Plaintiff claims that the modification was devised by himself and merely consisted in making the die in two pieces instead of three; and the evidence is indisputable that the article defendant did make was made upon the plans, under the instruction, and with the identical dies that were got from the plaintiff. Whether it was the thing patented or not, it was the thing defendant procured from plaintiff and agreed to pay for. An unpatented article, though of a kind that would entitle it to a patent, may nevertheless be the subject of purchase. So long as the inventor holds the secret in his own possession, and a fortiori when he has the model or die as plaintiff had here, it is property, or a thing of value for the transfer of which he may demand a price, and if he passes it over to a purchaser on an agreement to pay, it is no defence to the latter to say that there is no patent. The learned judge was therefore entirely right, even without calling in the aid of the principle enforced in Hubbard v. Allen, 123 Pa. 198, that the licensee is liable for the stipulated royalty if he uses any part of the invention, which clearly covers the present case.

The only remaining point to be noticed is the variance between the contract declared upon for an exclusive use of the invention, and that shown by the evidence. This is not a good ground for reversal under the circumstances. The evidence was admitted without objection ; no surprise was alleged, nor was any request made for the withdrawal of a juror and continuance. Nor was there any question of fraudulent representations,, or of failure of consideration. Had the defendant admitted a contract for exclusive use and defended on the ground that the use had not been exclusive, and thereby loss had accrued or the agreed royalty had been rendered excessive, the variance would have become material, but nothing of this kind was alleged. The defence was a denial in toto of any contract at all. The case was tried on its merits on that issue, and defendant having taken its chance of a verdict cannot now be allowed to profit by the variance.

The motion to amend is allowed, and thereupon judgment affirmed.