App. Div.] Second Department, January, 1921. The device designed by the defendant, which consisted merely in the difference in location of equalizing springs, a matter of mechanical construction, was not an invention. The Patent Office having refused a patent to the defendant on the device on the ground that it was embodied in the mill owned by the plaintiff, said device was not patentable within the meaning of defendant's covenant. Under section 1317 of the Code of Civil Procedure, the Appellate Division in affirming a judgment may make its own findings. The plaintiff did not establish that the defendant in failing to disclose the device did withhold an improvement on the plaintiff's mill within the purview and purpose of the covenant. The good faith of the defendant in not making disclosure was not an ultimate fact in issue, for his belief that he had not invented an improvement on the plaintiff's mill was not decisive of his liability. But defendant's testimony as to his good faith was admissible since the plaintiff questioned it and it was not irrelevant to the issue. On all the evidence, held, that the defendant has performed all of the covenants and conditions of the contract and has not violated any of the terms or conditions thereof. APPEAL by the plaintiff, George H. Fraser, from a judgment of the Supreme Court in favor of the defendant, entered in the office of the clerk of the county of Kings on the 10th day of December, 1919, upon the decision of the court rendered after a trial at the Kings Trial Term, the jury having been withdrawn and discharged upon consent of the parties. In 1899, Fraser, the plaintiff, and Kent, the defendant, made a written contract whereby Kent assigned his patent for the Kent mill to Fraser and Fraser agreed to make and to sell the mill of that type and to pay Kent a royalty of $600 upon each mill sold. The contract contained a provision relative to future improvements of the mill. The two provisions of the contract particularly material in this action are: "First. Said Kent hereby conveys and assigns to said Fraser all the right, title and interest which he now has or may hereafter acquire in, to and under each and all of said Letters Patent, applications and inventions hereinbefore recited, together with any and all improvements on the particular mills set forth and claimed in said Letters Patent and applications already filed; and together with all his right, title and interest in and to the above recited agreement between said Kent and the Kent Pulverizing Company; Provided however, that this assignment shall not be deemed to include any future Second Department, January, 1921. [Vol. 194. inventions and improvements of said Kent other than those which are improvements on the particular mills set forth and claimed in said Letters Patent and in said applications already filed, all other future inventions of said Kent to be and remain his undivided property. "Second. Said Kent further covenants and agrees to execute, acknowledge and deliver to said Fraser, when and as demanded by him, specific assignments of each of the Letters Patent, applications, inventions and improvements hereinbefore recited and contemplated in such form as will enable said Fraser to perfect and secure his record title thereto and to each and every part thereof, such instruments, however, to be by their terms conditional upon and subject to the provisions of this agreement. Said Kent further covenants and agrees to promptly and fully disclose to said Fraser all improvements invented by him upon said particular mills as aforesaid, and whenever said Fraser shall deem any of said improvements of sufficient value to patent and shall cause applications for patents to be prepared therefor, then said Kent shall duly execute such applications upon demand, but the same shall be without cost to said Kent." Fraser thereafter made and sold the Kent mills and a development of them known as the Maxecon mill. After a time dissensions led to law suits. In this action Fraser sues Kent for damages for breach of his covenant in the said second provision of the contract. He complains that Kent made that breach in 1901, which was not discovered by Fraser until 1917. Fraser alleges his performance of the contract, save payment of certain royalties due Kent but for the alleged breach. Kent answered by way of general denial. Almet Reed Latson, for the appellant. I. R. Oeland, for the respondent. JENKS, P. J.: The law recognizes such a contract. (Magnolia AntiFriction Metal Co. v. Singley, 17 N. Y. Supp. 251, 253, and cases cited.) The issue tried is whether Kent broke the covenant contained in the 2d paragraph. Fraser contends that Kent did so when in 1901 Kent filed an application for a patent App. Div.] Second Department, January, 1921. for the Hubbard mill. This contention rests upon certain drawings in that application numbered 11, 12 and 13. It seems necessary to explain the contention by reference to the Kent mill. This mill (and its development, the Maxecon mill) crushes substances like ore or rock. The type is known as the "ring roller mill." There is an upright metal ring termed the crushing ring. Inside of that ring are set crushing rollers. Material placed between ring and rollers is crushed between them. The type was not new. The novelty of Kent's mill is the equalization of the pressure of rollers against ring. Theretofore, if the material to be crushed happened to contain a resisting substance, there was danger to the machinery. Kent's invention made these rollers adjust themselves, automatically distributing the pressure, and so safeguarded the machinery. This adjustment of the rollers was made by three springs which held each of the three rollers separately against the ring. Kent's application for the Hubbard mill included the use of equalizing springs. In Kent's mill the springs were placed outside of the ring outside of its frame. Fraser insists that these said drawings-11, 12, 13—which revealed that in the Hubbard mill such springs were to be placed between the axles of the rollers, showed that the springs in the Kent mill could be so placed and, therefore, Kent violated his said covenant by not promptly and fully disclosing "this device" to Fraser. Let us examine this covenant, in consideration of the situation of the parties. Fraser was a solicitor of patents who proposed to enter upon the business of making and selling the Kent mill. He acquired the patent from Kent, the inventor, in consideration of a royalty of $600 upon each mill sold. Naturally, Fraser would seek to control any improvements thereafter invented by Kent upon that mill, and Kent would agree in consideration of the royalties which were to be paid to him. (See comments of BRADLEY, J., in Aspinwall Mfg. Co. v. Gill, 32 Fed. Rep. 700, 701.) Fraser must have understood the language of the covenant expressed in terms usual in the nomenclature of patent law. Kent was not in the service of Fraser, and the covenant did not impose such servitude upon Kent. It did not oblige Kent to disclose ideas or suggestions as to changes or alterations which, although they might be described as improvements upon Second Department, January, 1921. [Vol. 194. that mill, were not patentable. An improvement may be such, without being patentable, or it may be patentable. As is said in Allison Brothers' Co. v. Allison (144 N. Y. 29), speaking of the word "improvement " as used in the assignment, " The word is to be governed, necessarily, in its application, by the sense which the context lends to it." (See, too, Lamson v. Martin, 159 Mass. 564, 565.) The covenant contemplates improvements invented by Kent that may be patented as improvements upon that mill. And the purpose of the covenant is to afford prompt and full disclosure that Fraser may cause an application for such a patent. The duty of disclosure arises only when Kent has invented an improvement on that mill for which a patent may be applied for. An improvement of the Kent mill imported an addition or alteration with respect to that mill to increase efficiency without destroying identity. It included two necessary ideas," first, the instrument to be improved, second, some change in it not affecting its essential character "but enabling it to produce its appropriate results in a more perfect or more economical manner." (Rob. Pat. § 210, citing authorities.) First. There is a conflict of testimony as to whether this device was an improvement on the Kent mill. Fraser is not supported by the fact that the device purported to be applicable to the Kent mill or to that type of crushing machine known as the ring roller type, for it is undisputed that the application for the Hubbard mill contemplated a different type of mill known as the "tube type" or "cylindrical” mill. Fraser testifies to his opinion that it was such an improvement, and his chief expert, Dow, supports him to the extent of the opinion that certain mechanical changes could have been made in that mill to admit of the location of the equalizing springs as suggested in the said drawings. Kent testifies to his opinion that the device was not applicable to the Kent mill, even with mechanical changes therein. And Kent's chief expert, Southard, corroborates that opinion in full. The long trial of two weeks was largely consumed in the examination and cross-examination of these two clashing experts. Within the confines of this opinion I cannot even summarize their testimony. Fraser's case, as I have said, rests upon the proposition App. Div.] Second Department, January, 1921. that drawings 11, 12, 13, show a device applicable to the Kent mill, and to that only, as, being the sole "three roll" mill in existence when those drawings were made. So it becomes of vital importance to consider the possible purpose and connection of those drawings. As to this it must be noted that these drawings are part of a series to which series the drawings 8, 9, 10 belong, and these precede the three in question. But while it might be asserted that one of these drawings shows three internal rollers (like the Kent mill), both the others show, respectively, one internal roller and two internal rollers, with external rollers or friction rings supporting the ring. And these forms are at least as near the Hubbard mill as any form of the Kent mill. A fair conclusion is that the whole series of six drawings has no certain application to any complete mill. a matter of Second. Was there an improvement "invented" by Kent? It is undisputed that the function of the equalizing springs in the Kent mill and as shown in the said drawings on the application for the Hubbard mill is the same. The difference disclosed is in the location of the springs mechanical construction. True, the springs as located in the Kent mill push from the outside, while as located in the drawings they would push from the inside, but that variance was not an invention so long as the functions were the same. (Westinghouse v. Boyden Power Brake Co., 170 U. S. 567.) Indeed, Fraser himself, a patent solicitor of long experience, ingenuously testifies that he knew of the principle and wonders that "I didn't do it myself "- this "mere shifting of the spring from one point to another," as he expresses it. His statement in his direct examination is as follows: Q. Exhibit 51? A. shown in Exhibit 51, was to put the springs inside of the axles radially of the rolls and effect the in and out yield from the inner point instead of the outer point. By the Court: Q. The same result by different construction? A. The same result by mere shifting of the spring from one point to another. Now, after it is all done it looks simple. I wonder why I didn't do it myself. When I sat down here and pumped out these mills and paid out all this money for them and had the disadvantages that I have labored under with them, it does surprise me that I didn't |