St. Paul daily globe. [volume] (Saint Paul, Minn.) 1884-1896, 1894-01-17
MILLION INVOLVED.
ST PAUL AND MINNEAPOLIS HARVEST.
! En- WORKS SCORE IN COURT.
ST. PAUL WINS FIRST INNING.

Contract Given the MinneapC.
II lis Harvester Works, But a
License to Manufacture Had
Been Issued to st. Paul Parties
al'f .;
Judge Nelson, Of the United States
circuit court yesterday handed down
hls decision in the suit between the
harvester companies of St. Paul and
Minneapolis, deciding on all questions
inifavor of the st. Paul company. ON
account Of the large amount involved,
this litigation is of general interest, and
of special local interest because both
companies are located in the Twin
Cities. The capital of the Wood Har-
vester company is 81, 100000 and that of
the Esterly company is 81, $780, 600.
The case was argued before Judge
Nelson, of the United States circuit court
some months ago on a motion made to
dismiss the bill of complaint and the APP
plicatioh for injunction. Il. d. Merwin
of this city, and John r. Bennett, Of
New York. appeared for the Walter A
Wood Harvester company, aud Paul and
Hawley,sp of Minneapolis, for the Mime
apolis Esterly Harvester company. The
action was brought to enjofn the in
frlngement OF a number Of patents.
Both Of the manufacturing companies
are located in Minneapolis. Tne action
involved about $1,000, 600 worth Of prop
erty. The effect of the decision by
Judge Nelson is that the ESterly COM
pany must quit manufacturing machines
in which the patents are used unless
there shall be filed by it a bond for $685.
600 to indemnify the Wood Harvester
company within ten days.
The decision made by Judge Nelson
recites the provisions OF a contract made
between the rival companies, and the
allegations of the bill of complaint. By
these it is aScertaned that the exclusive
right TO manufacture in the state of
Minnesota under these patents was &C
quired by complainant, then under the
name of the Minneapolis Harvester
works. by written instrument from the
patentee, dated March II, 1881, and that
a license had been previously issued to
George ESterly 81 Son by the same
patentee.
The agreement entered into Nov. Z,
1879, between Charles Ii. Parker, Gus
tavus Stone, l.. Ii. Parker. John F.
AppIeby and Edwin d. Bishop. all of
Beloit, Wis, and George Esterly and
George w. Esterly, under the firm name
of George Esterly IL Son, of White
! water, Wis, provided that the party of
theg first part licenses the party of the
ort To ,foa t, ot,d TO col
/ to Others during the life of the
patents. what is known as the
Appleby twine binder. and to have the
/ full benefit of all improvements that
, might from time to time be made to the
I binder. and the patent OH the reel of the
harvester known as the Beloit harvest
er, and such other patents as were
pending on the harvester and binder,
upon the payment OF IS as
a royalty for each and every
binder manufactured and sold.
The accounts of sales were to be kept
in such shape that they could be eX-
examined by the party of. the first part
s1at any time. For the use of the patents
iof the harvester, without the binder
ithey were to pay one-half of the royalty
agreed upon. --r...
Power was reserved to revoke the
license in case the, party of the second
part failed to perform their part of the
agreement.
It was insisted by the plaintiff that
the license was personal to George
Esterly u Son, and unassignable, and a
preliminary injunction was asked on
that ground. Defendant admitting its
manufacturing in Minnesota under the
license of Nov. Z, 1879. issued to George
Esterly 81 Son, claimed the right SO to
do, by assignment, and asked that the
bill be dismissed on the ground that no
question under the patent laws, OF other
federal question, was involved, ana that
the court was without jurisdiction in
the case. Both motions are heard to-
gether.
The relief sought in this suit is not to
enforce or set aside a license contract,
but it was claimed that the defendant
had no right to manufacture in this
state under the Appieby and other
patents, aud was infringing the rights
of complainant. Proceeding the decis-
ion says.
If the license of Nov. Z, 1879, is per-
sonal to the licensees therein named,
the manufacture by the defendant
under the letters patent is unlawful;
for it has no authority or right so to do.
The existence of right to manufacture
being directly involved, the controversy
grows out of the patent laws, and this
court has jurisdiction.
the question which must control is:
Was the license of Nov.7, 1879, asSignable,
or was it personal to George ESterly IL
Son?
Upon careful examination DO not find
any words that carry power to assign
this license. 1t is well established that
a license by patentee is personal to
the licensee, and not transferable to
another. unless it contains words which
show that it was intended to lie as
signed.
am. therefore, Of the opinion that
the license of Nov. Z, 1879, was personal
to George Esterly q Son, and did not
carry with it the power to assign or
transmit any rights under the same to
| this defendant, and the motion to dis
miss is denied.
r Again, the right Of the complainant
| to an injunction, as the cause now
| stands, would seem clear, but there are
some equitable considerations which
| influence me to relieve the defendants
from the strict and rigid application of
| -the-r rule in granting preliminary injunc-
tons. The suit can be brought to final
hearing at the March term at Minneap-
oils, and defendants counsel suggests
that, to that end, he will expedite the
cause. The defendant has as yet adj
duced no testimony, and may possibly
! change the status of the case; besides,
|. adequate protection can be afforded by
an indemnity bond.
+ shall, therefore, issue an order that
"a preliminary injunction issue, unless
the defendant within ten days give a
| bond in the sum of S25, 900. with sureties
| to be approved, to pay all and any costs