App. Div. 114] First Department, May, 1921. sideration, in which the court said (at p. 386): "From the evidence, there cannot be a doubt but that the patent in both respects is defective and void; it was conclusively shown that material parts of the machine had been in use previous to the patent, and that the machine was worked upon the same principle as machines before in operation. Secondly. The patent purports on its face to be granted for a new and useful improvement in the washing machine,' and the schedule annexed, containing a specification of the improvement, gives a description of the entire machine, without distinguishing one part more than another as belonging to the patentee as the inventor. His patent is for the entire machine, for the principal parts of which, and the mode of operation, he clearly is not entitled to the credit of profit arising from the discovery. It is said in Evans v. Eaton, 7 Wheaton, 356, that a party cannot entitle himself to a patent for more than his own invention; and if the patent be for the whole of the machine, he can maintain a title to it only by establishing that it is substantially new in its structure and mode of operation. See 1 Peters, 322, 3 Wash. C. C. R. 443.* A patent for an improvement should describe the machine in use, that it may be known in what the improvement consists. 1 Paine, 441.* In Brunton v. Hawkes, 6 Com. Law R. 593, a patent for improvements in the construction of ships' anchors, windlasses and chaincables was held void, because there was no novelty in the construction of the anchors. The patent being void, nothing passed to the plaintiff in error, and the note was given without consideration." Plaintiff relies upon an isolated quotation from Martin v. New Trinidad Lake Asphalt Co., Ltd., No. 3 (182 App. Div. 719), PAGE, J., writing: "The seventh defense is predicated upon the alleged invalidity of the patent, but a licensor cannot as a defense to the payment of royalties attack the validity of the patent any more than a tenant can defend an action for rent on the ground that the landlord's title is defective." It will be noted in that case that the action was brought to recover royalties which had accrued under a license upon In this case aside from a few unsuccessful attempts user. * See Evans v. Eaton (1 Pet. C. Ct. 322; 3 Wash. C. C. 443); Sullivan v. Redfield (1 Paine, 441).— [REP. First Department, May, 1921. [Vol. 197 to produce a satisfactory working of the device there was no user and besides the defendant distinctly stated that it would not use it unless the plaintiff could settle the question of infringement with Morange, a condition that was reasonable in view of the subsequent disallowance of the vital claims in plaintiff's application to the Patent Commissioner. The legal position of the parties is set forth in Marston v. Swett (82 N. Y. 526), in which the plaintiff granted an exclusive license to the defendants under a patent for which the defendants agreed to pay royalties. The court there stated: "We think the true rule to be deduced from the authorities is this: Where the patent is apparently valid and in force the party using it, receiving the benefit of its supposed validity, is liable for royalties agreed to be paid and cannot set up as a defense the actual invalidity of the patent. The reasons for the rule are that the party has got what he bargained for; that he cannot be allowed at the same time to affirm and disaffirm the patent; and that he cannot in this way force the patentee into a defense of his right and compel him to try it in a collateral action. While the manufacture goes on under such an apparently valid patent it is presumed to be under and in accordance with the agreement to pay royalties. If the manufacturer does not so intend, and chooses to make the patented article, not under the patent but in hostility to it, he must give notice of that intention, in order that the presumption may not attach or the patentee be misled. But if the patent is annulled or destroyed by due and effective legal proceedings and priority of invention and a patent is awarded to another, no notice is necessary for there is no presumption or inference of manufacture under a patent judicially avoided and annulled. It ceases to exist. [Italics ours.] The manufacture is either absolutely free, or an infringement upon the rights of the prior inventor, or in submission to his claims." The determination appealed from and the judgment of the Municipal Court are reversed, with costs in this court and in the Appellate Term, and the complaint dismissed, with costs. CLARKE, P. J., DOWLING and PAGE, JJ., concur; SMITH, J., dissents. App. Div. 121] First Department, May, 1921. SMITH, J. (dissenting): The license was confessedly valid to give to the defendant the right to use the improvements for which letters patent were given to the plaintiff. This right thus secured to the defendant has never been renounced by the defendant. The defendant itself may procure a license from the original patentee of the main device and still use these improvements without payment therefor, if this decision be right. As I read the evidence the defendant had full knowledge before the making of this contract, not only of the existence of the Hanlon patent, but also of its scope, and the contract must be read in view of that fact. I, therefore, dissent. Determination and judgment reversed, with costs and disbursements in this court and in the Appellate Term, and the complaint dismissed, with costs. MORTIMER B. FOSTER, Appellant, v. N. W. HALSEY & COMPANY, Respondent. Costs First Department, May 27, 1921. taxation under Code Civil Procedure, § 3251, subd. 4, when cause on Appellate Division calendar more than one term expenditure for corrections in printing appeal papers allowable - costs on appeal from order denying retaxation. Where a cause has appeared on the Appellate Division calendar for three terms, exclusive of the term at which the appeal was argued, the plaintiff is entitled, under subdivision 4 of section 3251 of the Code of Civil Procedure, to tax costs at thirty dollars for the three terms. In the absence of any criticism as to good faith in the expenditure of money for corrections in printing the papers on appeal, the items should be allowed. It is not error on an appeal from an order denying the retaxation of costs to allow costs to be taxed on such appeal even though the motion was not actively opposed at Special Term and no opposing affidavits or memoranda were submitted, but the appearance was made solely for the purpose of obtaining a ruling as to whether the items in question were properly taxable as costs. First Department, May, 1921. [Vol. 197 APPEAL by the plaintiff, Mortimer B. Foster, from an order of the Supreme Court, made at the New York Special Term and entered in the office of the clerk of the county of New York on the 11th day of February, 1921, denying plaintiff's motion for a retaxation of costs. Edward H. Neary of counsel [Edwards & Bryan, attorneys], for the appellant. John N. Regan of counsel [Shearman & Sterling, attorneys], for the respondent. GREENBAUM, J.: Plaintiff appeals from an order denying his motion for retaxation of a bill of costs and affirming the ruling of the clerk in striking therefrom thirty dollars for three term fees in the Appellate Division and eight dollars for additional expenses in printing the papers on appeal. Section 3251, subdivision 4, of the Code of Civil Procedure provides: "For each term of the Appellate Division, not exceeding five, of the Supreme Court, at which the cause is necessarily on the calendar, excluding the term at which it is argued, or otherwise finally disposed of; ten dollars." The Judiciary Law (§ 78) provides: "The terms of the Appellate Divisions of the Supreme Court are to be appointed by the Appellate Division in each department, and are to be held at such times and places and shall continue so long as the Appellate Division deems proper. The justices of the Appellate Division in the First Department shall fix a time and place for holding the terms of the Appellate Division in the First Department on or before the first day of December in each year." On or about November 19, 1919, this Appellate Division made its appointment of terms for the year 1920 as follows: "APPELLATE DIVISION OF THE SUPREME COURT APPOINTMENT OF TERMS OF THE APPELLATE DIVISION OF THE SUPREME COURT IN THE FIRST DEPARTMENT, 1920. "The undersigned Justices of the Appellate Division of the Supreme Court in the First Department, pursuant to the provisions of Section 78 of the Judiciary Law * * * do App. Div. 121] First Department, May, 1921. SMITH, J. (dissenting): The license was confessedly valid to give to the defendant the right to use the improvements for which letters patent were given to the plaintiff. This right thus secured to the defendant has never been renounced by the defendant. The defendant itself may procure a license from the original patentee of the main device and still use these improvements without payment therefor, if this decision be right. As I read the evidence the defendant had full knowledge before the making of this contract, not only of the existence of the Hanlon patent, but also of its scope, and the contract must be read in view of that fact. I, therefore, dissent. Determination and judgment reversed, with costs and disbursements in this court and in the Appellate Term, and the complaint dismissed, with costs. MORTIMER B. FOSTER, Appellant, v. N. W. HALSEY & COMPANY, Respondent. First Department, May 27, 1921. Costs - taxation under Code Civil Procedure, § 3251, subd. 4, when cause on Appellate Division calendar more than one term expenditure for corrections in printing appeal papers allowable - costs on appeal from order denying retaxation. Where a cause has appeared on the Appellate Division calendar for three terms, exclusive of the term at which the appeal was argued, the plaintiff is entitled, under subdivision 4 of section 3251 of the Code of Civil Procedure, to tax costs at thirty dollars for the three terms. In the absence of any criticism as to good faith in the expenditure of money for corrections in printing the papers on appeal, the items should be allowed. It is not error on an appeal from an order denying the retaxation of costs to allow costs to be taxed on such appeal even though the motion was not actively opposed at Special Term and no opposing affidavits or memoranda were submitted, but the appearance was made solely for the purpose of obtaining a ruling as to whether the items in question were properly taxable as costs. |