for use in the United States and Canada should be exclusively manufactured by the Edison Phonograph Works in perpetuity. Complainant insists that the licenses were in effect extended beyond the date mentioned in the contract, and for such period as the American Company by its agreement with the Edison Works was authorized to extend the same. The argument proceeds upon the theory that, as the American Company acquired legal title to the Edison phonograph patents, the license granted by that company to the Metropolitan Company continued during the life of the patents, and, the manufacturing contract between the American Company and the Edison Works being in perpetuity, the license privileges conveyed to complainant's predecessors were likewise perpetual or of indefinite duration. This inference, however, is not warranted by the law or facts.

The parties to the various contracts undoubtedly intended to effect a mutually beneficial plan of co-operation in promoting and exploiting the phonograph, and to maintain, preserve, and perpetuate the relations established by the contracts. Hence such rights, franchises, and privileges as the American Company had authority to convey were conferred upon complainant's predecessors. The agreements by which the patents were transferred to the American Company, and the established rights of the parties, considered in connection with the testimony of Mr. Edison, unquestionably warrant a determination that the parties actually intended their relation to be continuous and lasting. Such contracts not only in terms assigned to the American Company the then existing phonograph patents and those applied for prior to August 1, 1888, but also any invention or improvement upon the phonograph made within 15.

years.

What precise meaning may be given to the words "in perpetuity" (contained in the contract between the American Company and Edison Phonograph Works) is not necessary to a decision here. The duration of the manufacturing contract, as to whether it was continuous, perpetual, or limited, does not affect the authority to extend the licenses in question, which the American Company had under the agreement by which the patents were sold to it and the exclusive rights granted as hereinabove mentioned. That the franchises, rights, and privileges secured were transmissible to complainant's predecessors upon the terms and conditions specified in the contract must, therefore, be conceded. It is well settled that a patent does not carry with it any rights beyond the term of the patent, or, in the words of Robinson on Patents, § 815:

"A patentee is not permitted to issue a license beyond his own right."

It may be noted for illustration that an extension of the term of the patent, which, in certain cases, was permitted under the prior act, does not inure to the transferee of a license, in the absence of language expressive of such intention. Hodge et al. v. Hudson River R. Co., 6 Blatchf. 85, Fed. Cas. No. 6,559; Wilson v. Rousseau et al., 45 U. S. 646, 11 L. Ed. 1141; Mitchell v. Hawley, 6 Fish. 331, Fed. Cas. No. 6,250; Id., 16 Wall. 544, 21 L. Ed. 322.

Furthermore, it is held that, during the period wherein an exclusive right has been granted, the patentee or licensor cannot invade the territorial license without infringing the grant, and that, in the absence of express provision covering the duration for which a license is granted, the legal presumption is that the parties meant to continue their relations during the term remaining at the time the license or privilege is conveyed. This would seem to preclude the possibility of the license to complainant's predecessors containing a perpetual covenant or valid provision continuing the term beyond the life of the patents. However, a more serious problem is found in the suggestion that the extension clauses contained in the licenses to the Metropolitan and New York Companies were self-executing, and continued beyond March 26, 1903, without the exercise of formal choice or the making of another agreement. As we have seen, the license to the Metropolitan Company does not expressly require giving notice of any desired extension, and contains no option clause. The phraseology of the paragraph containing the right of enlarging the terms of the licenses, though somewhat confusing and indefinite as to duration, must be read in connection with the prior contracts between Mr. Edison and the companies alleged to be under his control and the American Company. The rule is that the circumstances surrounding the transaction, the subject-matter of the arrangements, and the prior acts of the parties must govern the effect given to uncertain or equivocal phraseology in the contract. Del., L. & W. R. R. Co. v. Bowns et al., 58 N. Y. 573.

The words "for such further time as the party of the first part may be authorized to extend such license," inserted in the license, when considered in relation to the covenants contained in the agreements whereby all inventions or improvements in the phonograph. made by Mr. Edison within 15 years were to be assigned to the American Company, would seem to clarify the evident uncertainty of the extension clause. Manifestly, at the time of executing the licenses, the parties were unable to specify and determine the period of their continuance, as that apparently was dependent upon future improvements in the phonograph and the status of the parties at the expiration of the original term. Such an interpretation of the intention of the parties induces the holding that, inasmuch as improvements were made subsequent to the contract of August 1, 1888, to wit, in the years 1888, 1889, 1890, 1891, 1892, and 1893, and patented by Mr. Edison, the license privileges or franchises granted by the American Company to the Metropolitan Company continued, without the necessity of further terms or conditions expressive of such intention. Such being the fact, the American Company had authority and power to convey the privileges mentioned in the agreement until the expiration of the life of the phonograph and improvement patents.

The New York Company license:

Except as herein before pointed out, the provisions under which the duration of both licenses was extended are the same. The legal

effect of the option in the New York Company license, in my opinion, was to enable that company, if it so desired, to abrogate the existing relations. This conclusion is not reached without hesitation, but further consideration of the evidence warrants holding that the option was in effect a reservation of a right to the licensee to discontinue the existing relations on March 26, 1903, if it no longer wished to co-operate in the enterprise. The extension of the license, obtained by the deposits of stock and of the extension license in the manner herein before indicated, was for five years, and for such further time, at the option of the New York Company, as the licensor was authorized to extend the same. This evidently was a positive grant, and its terms, doubtless, were perfectly understood by the parties. As indicated, there is abundant evidence in the record from which the intention of the parties to extend the license to March 26, 1903, may be ascertained. Defendants' contention that it was necessary, as a condition precedent, that complainant should formally notify the American Company, or its successors, on March 26, 1903, whether it elected to continue under the license granted to the New York Company, or preferred to exercise its option, is thought not to be maintainable. Not only was this action instituted prior to March 26, 1903, to compel a recognition of complainant's rights under the licenses, but complainant in many ways, as shown by the proofs, evidenced its intention to continue in the phonograph business and to exercise the right of carrying on the same under the license agreement. Its franchise rights, however, as has been stated, were persistently ignored and disputed by Mr. Edison and the defendants. That complainant endeavored to obtain phonograph records and supplies from other dealers when defendants refused to supply the same (as permitted. by the terms of the license) is also shown. Attention is directed to the evidence showing that complainant's efforts to obtain phonograph supplies were obstructed by a suit instituted by defendant National Company against Leeds, Catlin & Co., to enjoin them from supplying phonograph records or appliances to complainant. As already observed, the defendants, in my judgment, by their acts must be deemed to have regarded the extension clause as selfexecuting and operative beyond the period therein specified. Moreover, the invasion of complainant's territory by the National Company, the refusal on the part of the defendants to recognize their exclusive rights granted, together with the institution of this action, would seem to have excused the New York Company from formally exercising any option. Such an act, in the circumstances presented, became nugatory and an idle ceremony. The principle is applicable that he who obstructs another in the performance of an act which otherwise would be obligatory may not avail himself of the nonperformance which he himself has occasioned. Dolan v. Rodgers, 149 N. Y. 489, 44 N. E. 167; Shaw v. Insurance Co., 69 N. Y. 286.

My conclusion is that a rehearing of this cause is not necessary. A re-examination of the record warrants the correction of the pre

616

vious opinion; and hence complainant is entitled to an injunction and accounting as prayed for in the complaint. Such injunction, however, may be stayed until determination by the Circuit Court of Appeals of the questions presented, provided, of course, an appeal is taken and seasonably prosecuted. A decree in conformity with the foregoing opinion may be entered.

PRINDLE v. BROWN et al.

(Circuit Court, D. Massachusetts. March 29, 1905.)
No. 2,024.

1. PATENTS-BILL TO OBTAIN PATENT-ALLEGATION OF INVENTION.

A bill filed under Rev. St. § 4915 [U. S. Comp. St. 1901, p. 3392], by an unsuccessful applicant for a patent, to obtain an adjudication of his right to such patent, which alleges his application on a certain date, and, in general terms, that he made the invention prior to such date, but which also shows that an application for a patent for the same invention had been previously made by another, without explanation of the apparent contradiction, is demurrable, since the date of the application must be taken by the court as the date of complainant's invention. 2. SAME-RIGHT TO MAINTAIN SUIT-FAILURE TO APPEAL FROM COMMISSIONER. An applicant for a patent, who failed to appeal from the adverse decision of the Commissioner to the Court of Appeals for the District of Columbia, as provided by Act Feb. 9, 1893, c. 74, 27 Stat. 434 [U. S. Comp. St. 1901, p. 3391], cannot maintain a suit to obtain a patent under Rev. St. § 4915 [U. S. Comp. St. 1901, p. 3392].

In Equity. On demurrers to bill and cross-bill.

Philip Mauro, Charles J. Williamson, Edwin J. Prindle, and Chas. E. Haywood, for Prindle.

Emery, Booth & Powell, for Trufant.

William Quinby, for Brown and Miller.

LOWELL, District Judge. This was a bill in equity brought under Rev. St. § 4915 [U. S. Comp. St. 1901, p. 3392]. It set out that before June 6, 1900, Prindle was the original and first inventor of a certain improvement in lasts, more fully described in an application filed by him June 6, 1900; that Trufant disclosed the invention to Miller; that Miller disclosed it to Brown, and that on May 28, 1900, Brown, wrongfully alleging himself to be the inventor, filed an application covering Prindle's invention as described in Prindle's application; that on September 27, 1899, Trufant filed an application for the invention, which application became abandoned for want of prosecution; that neither Trufant's knowledge, nor his application, nor his disclosure to Brown prior to Prindle's application, nor Brown's application prior to Prindle's, entitles Trufant, Brown, or Miller to a patent as against Prindle, and that none of these things impair Prindle's right to a patent; that after Trufant's application was abandoned the Commissioner of Patents declared an interference between the claims of Prindle and Brown; that on August 1, 1901, Trufant filed a second application; that an interference was redeclared between Prindle, Brown, and Trufant; that the issues were found in favor of Prindle; that, on appeal to

the board of examiners in chief, priority was awarded to Brown; that the Commissioner affirmed the decision of the examiners in chief; and that the Court of Appeals for the District of Columbia affirmed the decision of the Commissioner. Prindle thereupon. prayed for a decree adjudging him entitled to the patent. To this bill Miller and Brown demurred generally, and more specifically because the bill did not allege that Prindle had any conception or knowledge of the invention before Brown's application was filed.

The allegation in the bill of the date of Prindle's invention must be taken to state its reduction to practice by an application to the Patent Office as of June 6, 1900, and there is no allegation of invention by Prindle at an earlier date. But on May 28th, a week before Prindle's invention as set out in the bill, the bill alleges an application filed for the same invention by Brown. That Brown may not have been himself the true and original inventor is immaterial. The bill shows that some person other than Prindle reduced Prindle's invention to practice before Prindle, though it does not show whether that person was Brown, Trufant, Miller, or some one else. Suppose the bill had alleged categorically invention by a stranger prior to the invention of Prindle. In the absence of possible explanatory allegations, no patent could issue to Prindle, though the bill somewhere alleged that he was the first inventor. Christie v. Seybold, 55 Fed. 69, 78, 5 C. C. A. 33.

Counsel for Prindle contended that an allegation of prior application by the defendant does not necessarily contradict an allegation of first invention by the plaintiff, but a bill which allèges invention by the complainant on a given date, and an earlier application for the same invention, without explanation of the apparent contradiction, is demurrable. Without explanatory allegations, the court is not required to determine if, by some extraordinary combination of circumstances, possibly imaginable, the allegations. which apparently deny the complainant's right can be reconciled with it. The demurrer is sustained, and the bill dismissed, with

costs.

Trufant, a defendant in the bill originally filed, filed a cross-bill against Prindle, Brown, and Miller, praying that the patent might be issued to him. Brown and Miller have demurred upon the ground that Trufant failed to prosecute an appeal from the Commissioner of Patents to the Court of Appeals in the District of Columbia, and therefore cannot avail himself of the remedy given by Rev. St. § 4915 [3 U. S. Comp. St. 1901, p. 3392], as affected by the act of February 9, 1893, c. 74, 27 Stat. 434 [3 U. S. Comp. St. 1901, p. 3391]. Trufant's counsel contended that proceedings might be begun in this court after the decision of the Commissioner of Patents, without going first to the Court of Appeals for the District of Columbia. The contrary was decided in Smith v. Muller (C. C.) 75 Fed. 612, and McKnight v. Metal Volatilization Co. (C. C.) 128 Fed. 51. I prefer to follow these decisions. The demurrer to the cross-bill is therefore sustained, and that bill also is dismissed, with costs.