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FIFTH DEPARTMENT, MARCH TERM, 1893. machines after June, 1886, in the circumstances shown, became liable: to pay the royalties thereon fixed by the contract, notwithstand-ing there was no express extension of the contract, and notwith-standing the notice then given by Brown that negotiations for a further extension were at an end. The subsequent conduct of the parties, in the circumstances, was a virtual extension of the contract.

"The case of the Union Manufacturing Co. v. Lounsbury (41 N. Y. 363) seems to be an authority for that position. The learned counsel for the defendant suggests that that case is distinguishable from this, by reason of the fact that there the notice forbidding the further use of rights under the agreement was given during the lifetime of the agreement, while here the notice that negotiations for an extension were ended was not given until the agreement had expired. It is true that the term covered by the extension of the agreement in question expired with the month of June, 1886, and the notice referred to was given at about that time, as has been remarked, but the agreement, by its terms, was to be extended for any length of time during the life of the patents that the defendant's firm might desire, the firm giving notice of such desire. Nothing was done by Brown towards rescinding the agreement or prohibiting the use of the rights conferred by it, beyond giving the notice' already mentioned. It was competent for the parties to continue the agreement, notwithstanding that notice, and to waive the formalities prescribed by the agreement. The desire of the defendant and his firm to extend the agreement was manifested by their continuing to use the right, which it gave them, of manufacturing and selling the machines, and the plaintiff's acquiescence in such use was shown by his taking no measures to prevent it and by his suing for the royalties provided for by the agreement. There does not appear to be any substantial difference between this case and that of the Manufacturing Co. v. Lounsbury, so far as the point under consideration is concerned.

"The cases cited by the defendant's counsel, which hold that a State court has not jurisdiction to try the question of an infringement of a patent for an invention, have no application to the case in hand. There is no question of an infringment here. The action is on the contract. The only allusion to an infringement in the pleadings is HUN-VOL. LXVIII. 25

FIFTH DEPARTMENT, MARCH TERM, 1893. found in one of the counts in the defendant's answer, which alleges that the machines made and sold after July 1, 1886, were not covered by Brown's patent and did not infringe it. That averment does not deprive the State court of its jurisdiction to try the question whether the plaintiff is entitled to recover upon the contract set forth in the complaint. Nor would it have given a Federal court jurisdiction of the action, if the action had been brought there, and the like pleadings had been put in. (Hartell v Tilghman, 9 Otto, 547; Albright v. Teas, 16 id. 613; Dale Tile Mfg. Co. v. Hyatt, 125 U. S. 46.)

"In the circumstances of the case, the only question raised by the portion of the answer referred to, is one of comparison between the machines made at the different periods above mentioned, and that comparison is material, not for the purpose of determining whether the defendant has infringed the plaintiff's patent, but for the sole purpose of determining whether, since June, 1886, the defendant, or his firm, has made and sold machines answering to the description contained in the contract, and if so, how many.

"If that question takes the case out of the jurisdiction of the court, it follows that the defendant, in every action brought in a State court to recover royalties or other compensation agreed to be paid for the use of a patent right, may oust the court of jurisdiction by interposing a defense like the one in question, and if he is then sued by the plaintiff in a Federal court for the same cause, he may procure there a dismissal of the complaint for want of jurisdiction in that court, by omitting to set up such defense in his answer.

"In Hyatt v. Ingalls (124 N. Y. 93) it was contended that a reissue of a patent, under which the plaintiff claimed, was void for the reason that it embraced claims not included in a former reissue, and omitted claims which were in the latter, and it was also contended that the issue thus made was not within the jurisdiction of the State court (p. 102), but the contention did not prevail, the court holding that it was matter of comparative construction of the two reissues, and although the last reissue was broader than the first, it embraced the claims represented by the former reissue substantially, and with a sufficient distinctness to preserve them within the principle that the reissue of letters patent, embracing more than did those surrendered, will be deemed invalid as to the excess, or new FIFTH DEPARTMENT, MARCH TERM, 1893. claims only, and the State court had jurisdiction (p. 103). So here, the matter is one of comparison of the two machines, and they being substantially alike, no question arises which the State court cannot determine.

"The defendant's counsel argues that the principle of the Brown patent had been in public use before his patent was issued, and, therefore, the patent is worthless. The defendant, or his firm, in whose place he now stands, having entered into the contract with Brown, and having taken from him a license to make and sell the subject of the patent, cannot, for the purpose of a defense to an action to recover the royalties, question the validity of the patent. (Marston v. Swett, 66 N. Y. 206; S. C. on 2d appeal, 82 id. 527; Hyatt v. Dale Tile Manfg. Co., 106 id. 651.)

"The defendant, having assumed the liabilities of his firm, on its dissolution, is liable for royalties on the machines made by the firm, as well as on those made by himself, since June, 1886.

"The assignment made by Dunning, as the general assignee of Brown to the plaintiff, carried the claim sought to be recovered herein.

"If the views above expressed are correct, the plaintiff is entitled to recover.

"There is evidence tending to show that the defendant and his firm have made and sold 6,347 machines since June, 1886, upon which no royalty has been paid. The royalty upon them, at the rate fixed by the contract - three dollars fifty cents per dozen amounts to $1,851.50. It appears that forty-eight machines, sold in July, 1886, were manufactured previously, and the royalties on them were paid.

"The plaintiff's counsel claims interest on the amount due, but interest is not demanded in the complaint, and as it appears that no demand was made for payment or for a report of sales until about the time of the commencement of the suit, I think no interest should be allowed."

It follows that the judgment appealed from should be affirmed, with costs.

DWIGHT, P. J., LEWIS and HAIGHT, JJ., concurred.

Judgment appealed from affirmed, with costs.

FIFTH DEPARTMENT, MARCH TERM, 1893.

LOUIS J. SHELMIRE, Respondent, v. WILLIAMS & CLARK FERTILIZER COMPANY, Appellant.

Contract in writing, in supposed duplicate variances in the writings retained by the respective parties - burden of proof.

In an action brought to recover a salary claimed to have accrued after an alleged unlawful discharge from employment before the expiration of the term of such employment, it appeared that the contract of employment was executed in supposed duplicate, but the paper retained by the plaintiff read: "We to have your services for two additional years," while the paper retained by the defendant read: "We to have the refusal of your services for two additional years." Held, that for the purposes of arriving at the intent of the parties, and particularly for the purpose of determining the liability of the defendant, the two instruments must be construed together as constituting the agreement between the parties.

That the burden of proof rested upon the plaintiff to show that the contract in his possession was the true one, and that he failed to do this, for the reason that the contract in the possession of the defendant must be deemed equally true and binding.

That the plaintiff having failed to establish his case by a preponderance of evidence, and the evidence in the case consisting wholly of writings, the construction of which was to be determined by the court, should have been nonsuited.

The action was tried in a County Court, and at the trial the plaintiff was permitted to give evidence designed to establish that the verbal agreement between the parties preceding the written contract was for an employment for the period and at the rate of salary claimed by the plaintiff.

Held, that in an action of law, in a court having no general equity jurisdiction, and hence with no power to reform the contract, the evidence was imcompetent, under the rule that all negotiations leading up to a written contract are deemed to be merged in the written instrument.

APPEAL by the defendant, the Williams & Clark Fertilizer Company, from a judgment of the County Court of Monroe county, entered in the Monroe county clerk's office November 23, 1892, on the verdict of a jury in an action brought by an appeal by the plaintiff to that court from a judgment of the Municipal Court of the city of Rochester, and also from an order denying the defendant's motion for a new trial made on the county judge's minutes, entered in said clerk's office on November 23, 1892.

R. E. White, for the appellant.

T. D. Wilkin, for the respondent.

MACOMBER, J.:

FIFTH DEPARTMENT, MARCH TERM, 1893.

This action was originally brought in the Municipal Court of the city of Rochester, and, on the trial thereof before one of the judges of that court, resulted in a decision in favor of the defendant upon the merits. On appeal by the plaintiff from such judgment demanding a new trial, the case was retried in the County Court of Monroe county, before the county judge and a jury, and resulted in a verdict in favor of the plaintiff for the amount claimed in the complaint, and to which the plaintiff was entitled, provided he had any right of action.

The action was brought to recover the plaintiff's unpaid and unearned salary for five months from September 30, 1891, upon the ground of a discharge of the plaintiff from the employment of the defendant in violation of the written agreement between the parties. This contract bears date October 3, 1890. It appears, however, that it was executed in duplicate, or in supposed duplicate, consisting of a letter from defendant to the plaintiff and the latter's acceptance of the same. The one relied upon by the plaintiff is as follows: "Mr. L. J. Shelmire. Dear Sir-We will pay you the sum of eight hundred dollars and traveling expenses, for the term of one year, commencing Oct. 1, 1890, and ending Sept. 30, 1891. We to have your services for two additional years at a salary of one thousand dollars per year and expenses as above stated. You to attend to shipping and such office work as we may assign to you, and traveling on the road, soliciting orders if we wish you to." The defendant duly accepted in writing the terms of the foregoing proposition properly indorsed upon the letter. The paper which was retained by the plaintiff was marked "copy," although it was in fact signed by the defendant as an original, and accepted as an original by the plaintiff.

The contract retained by the defendant, executed in the same way, was in all respects like the one above quoted except that in the second sentence it read: "We to have the refusal of your services for two additional years instead of "We to have your services for two additional years."

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It is plain, therefore, if the contract relied upon by the plaintiff was the true and only one between the parties, that the judgment appealed from should be sustained; while it is equally apparent,

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