The New York herald. [volume] (New York [N.Y.]) 1840-1920, 1854-11-07
The Great India Rubber Case.


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The Great India Rubber Case.
We give below, the decision Of Judge Pitman, of the
Circuit Court of the United States for the District of
Rhode Island, in the of Horace H. Day. Isaac
Hershorn and others 1t was argued in October last by
Charles OConnor Of this city, ana Mr.. Ames, of Prov
dence for Hartshorn and by N Richardson of this city
and I. A. Jenckes, of Providence, for Day
CIRCUIT COURT U. s., DISTRICT or RHODE ISLAND,
JUNE TERM, 1854.
Horace ", Day, us lsoac Hdrshorn, e dI.-This Is
action 10 damages for alleged infringement
of patent right Edwin NJ ChaIee, the 31st day OF
August, 1876, Obtained patent Tor certain improve
ment in India rubber machinery, which he afterwards
was granted to Chaiee on the 3olh August 1880 and
the plaintiff claims under an assignment OF the extended
patent from Caee, dated July 1858. The defendants
have pleaded the general issue with notice OF special
matter under the statute and four special pleas to which
the plaintiff has filed general demurrer. The first spa
cal plea sets forth agreement between said Chalee
and GOODYEAR dated the 23d Moy, 1850 This agreement
contains assignment Of another invention of Chaiee.
mot yet patentcd) for compromising sunac or sheae
and also agreement to convey to said Goodyear the
EXTENDED patent for rubber machinery upon the Issuing
the extended patent to Chaee, and the part Of the
said Goodyear agreement to pay fifteen hunrel dol
lars to said Ccaee upon the assignment OF the said pa
tent. The defendants then say that they used, with
the license and permission OF san Goodyear, the
machine mentioned in the plaintiffs declaration,
Mt the times and to the manner and extent stated and
complained of in the said declarations g as they law
fully might for the cause Aforesaid The executory
agreement set forth in this plea is relied upon tho
authority which Goodyear had to license the defendants
TO use said improvements 1t Is not averrcd that said
Goodyear required the execution Of this agreement
the part of Chaee that he ever rendered to Chaf
fec the fifteen hundred dollars which he was bound to
pay him the assignment of the same case, there
FORE is not made which would warrant court Of equity
in requiring the specific performance Of this agreement
court Of law In giving damages for its nonperform
ance Before Goodyear could had any authority
grant licenses to this extended patent 1t must have
been assigned to him. and not merely agreed to be
assigned No authority being shown in Goodyear to
license the defendants, the license set up by them, in
their justification this plea must be considered void
The demurrer to this plea sustained Tho second spe
cal plea sets forth the executory agreement be
Chaee and Goodyear set forth in the first and also
two other agreements between said Chaiee and one Mr.
Judsonone dated Sept. s. 1885, the other Nov H. 1851
andaf several averments, closes az follows'And
the said defendants further, in fact, say that at
ration mentioned they (these defendants,) used
the said machines In the said declaration mentioned
tanning the said Improvement and invention therein also
mentioned by and with the license and permission of the
said Charles Goodyear, and by and with the license and
permission of the said William Judson, they, the said
defendants lawfully might for the cause Aforesaid No
further authority Is shown in this plea for Goodyear to
license the defendants than in the first plea The only
question remaining under this plea is whether Judson
license the defendants The authority of Judson TO be
found, If in the agreements between him and
From the recitals in the agreement Of the 9Th Sept,
1850 it appears that the agreement between Goodyear
and Chaaee Of tho ssd May lsS9 had been modified 50
others, using said patent under inhat they would he
at the Of applying for said extension of said
tent and make ChaIee allowance for the thereof
Of twelve hundred dollars per annum instead of fifteen
hundred dollars for assignment thereof that the
penses Of procuring said extension had been large by
been aseerained, and could not then be; that said
Ju'lscn had had the management Ct said app'-
cation For said extension. aud had paid and be-
liable to Jay the expenses thereof and
agreed to guaranteed the snia Chaaee the annuity
the thereof. Chai1ee then goes TO saw in this
agreement, Now do hereby in consideration OF the
premises and TO place my patent so that in case Of my
ccah or other accident or event II may cnure 70 the be-
peht OF the said charles Goodyear and those who had
light 10 the Of said patent under and in CONNECTION
with his licenses, according to the understanding of the
parties Interested nominate, constitute and appoint said
VIM. Judson trustee and attorney. rrevocabe, to
hold said patent and have control thereof that
ore shall have license to use said patent invention
or tho improvements secured thereby other than thos,
who had right to the same when said patent
extended without the written consent of said Judson
first hadan Obtained Here is authority given to
Judson to license but only to prevent licenses
from being given TO Others without his written consent
except Good and those connected with him speci
fed in said agreement The agreement Of November,
1851 rectes that it was agreed by the agreement Of 9Th
September, 1850, ''on what terms said charNe would
continue to hold said patent for the benefit Of said Jud
son and Charles Goodyear, and his licensees"
whereas said asTeems1t there was an omission to
IN y uS ns
butte anu pay aid ucn his proportion Of the and
Sa 3 %
.S @ ssS ssS tho @
tension thereof and whereas IL is now agreed said Chat
ssd as the ossets
y the
Penses to said Juon as the condition on which they shall
and that the payment Of his their share or proportion
O. 1 and said add qS,Sn a S r
paying aforesaid severay each for himself or his firm
Or company.
1t is not averred in this plea that the defendants paid
their share OF the expenses and services to said Judson
which made the condition precedent on which they
TO have the license Of said Juson, and upon the
payment Of which said Jndson authorized to grant
license to the defendants In to this objection
to the plea II said that this part of the agreement
November. 1851, made for the sole benefit of Jud
and to enable him to collect these expenses OF Good
years licensees, which ne had paid agreed to pay
that condition made for the sole benefit of any he
has right to waive; that Judson, If he granted the
licenses TO the defendants without requiring this pay
ent, virtually waived the same; that Chace had
interest in the performance Of this condition. the license
Of Judson is good, whether the defendants did did not
pay their portion of these expenses. II Chaaee
was responsible for these expenses, then he had
shs interest in the performance of this condition
by the defendants, TINT the payments by the de-
PENDANTS might enable Judson more surely and
speedily to nay them and prevent Chaifee from
being called upon Ia pay them; or If Chaliee had
been obliged 10 ray any Of these expenses then he
interested that udscn should require the fulimens of
this condition, "A Of bling Judson to repay
him. II Is not aycrrod that Chaee was not responsible
for these expenses does it appear from these agree
ments Toe Iale0t WAS extended for his benefit, ami
granted 10 him. aud services rendered and eAenscs
paid in The procurement Of the same would itmd tdce
be fair charge against him; and ne was not re-pon-
sblc for them at ALL thea there vas no. need of any
agreement 10 him from paying the same. IL at the
time OF the asrcencn, Nov OF or when the license was
granted by Jndon The defendants, all these expenses
ard services had beeu paid by pisen, then ChalIee
had 40 incrct in the payment " the defendants OF
their proportion Of lie - Julson; hut this does
not appear in the Plea Upon the facts presented to
by This s'ea ami confessed by the demurrer oonno.
say that Caee had interest in the performance Of
this condition. ] cannot, therefore, give effect 70
the license Of Judson suhcent TO justify the defendants
whou; an avormtnt Of the condition precedent on their
part. without ayernent Of such fac a. would en-
able to say that ,haee had no interest in its per-
formancc. but | have serious doubts II Chafce
had peeunary interest in tho performance of this
condition, whether ut law the license of Judson would
he good Without t. Interest no interest Chaee hal
right require H. lie il the source OF power in that
respect and had right 10 say on what terms licenses
should be granted. .udson was but acting ureT has
authority, his attorney with power indeed coupled
With an interest, aud connected with ~ agreement
which, IL executed on his par in good fah may render
the power irreyccahle but this, Of itaclf did not ena-
be Judson to dispense wifi tho conditions required by
the power Of attorney prerequisites TO the authority
granted him 10 grant Licenses. However court Of
equit, might consider itself justified ~ viewing this in
- .xrnt