Judson v. Moore.

it. The principle of a gradual opening, through all its range of motion, would seem to be the distinct characteristic of the invention of Judson, and, if the jury believe the valves said to be identical do not embrace this feature, there would seem to be no ground for supposing that Judson's valve was not an original construction. If they think that to accomplish the purpose at which he aimed, and give, in connection with the governor, a steady motion to the engine, was an object of utility, and that it is not proved to have been accomplished before, it will be for the jury to consider whether that fact does not show the originality of this invention. The evidence of the success and practical results of the Judson invention goes more directly to the question of utility, but the jury may take it into consideration, in deciding on the novelty and originality of the invention. Practical results are more to be regarded than theory, and may be taken into consideration in a question of originality. Whatever may be the opinion of experts, if the proof be satisfactory that they are unlike any other known valves, in operation, the conclusion would be clear against their substantial identity.

On the subject of the practical operations of the Judson valve, the jury have a good deal of testimony, which I have no doubt they have kept in memory. It seems, however, that there is testimony that the principal object of Judson, that of preventing perturbations by means of the governor, is fully effected by the improvement, and so far as we have any information, his valves have effectually accomplished the purpose to which I have adverted. I have remarked already upon the question of utility, though I do not understand that feature of this improvement to be seriously controverted by counsel for the defendants. I suppose, that, upon the evidence before the jury, they would have no difficulty in believing the invention to be one of great utility.

The next question, and one of importance, is that of infringement. "Have these defendants used the invention

Judson v. Moore.

patented to plaintiff," is the question for the consideration. of the jury. The question to be decided is, whether the "Cope" valve is the same in principle and structure with that patented to the plaintiff. I will remark that it does not depend upon form or proportions so much as upon the principle of action, and the operation of the two things. It will be for the jury to say whether the Cope valve involves the principle of a graduated increase through its whole range of motion, and is substantially the same as that claimed by plaintiff. Several witnesses have stated that, in their judgment, the Cope valve and the Judson valve are the same; that they are substantially alike in their operation. It will be for the jury to say what weight shall be given to the judgment of these experts. They will also determine, by the examination of the models of these valves, and the testimony adduced upon the subject, whether there is that identity between the Judson valve and the valve used by the defendants, which will justify the jury in saying that the right of the plaintiff has been infringed. It is insisted, by counsel for defendants, that their valve acts on the principle of the Eunison valve, and is different from the Judson valve; that, unlike the Judson valve, it does not act on the principle of graduated openings through its whole range of motion; and is therefore essentially different from the plaintiff's improvement.

The identity of these valves is an important issue in the case, for, if the jury are satisfied that the Cope valve is different from the Judson valve, there is no infringement.

In regard to the question of damages, I will simply say that the whole subject is within the discretion of the jury. There are no data given in the present case by which damages can be estimated. The plaintiff is entitled to his actual damages, and it is for the jury to say what they shall be, if they believe him entitled to recover.

The jury found a verdict for plaintiff.

McNamara v. Gaylord.

(CIRCUIT COURT.)

THOMAS MCNAMARA v. BENJAMIN B. GAYLORD ET AL.

A contract free from ambiguity in its terms must be viewed as the exponent of the intention of the parties to it, and can not be varied or contradicted by extrinsic evidence.

A partner can not, by an agreement to sell a part of his interest, compel his other partner to accept the vendee as a member of the firm. Where one party to a contract agrees to do an act at a time specified, in consideration of which the other party is to do another act at the same time, neither party can sue for a violation of the agreement, or insist on its specific performance without showing an offer to comply with the agreement, or a sufficient excuse for not doing so.

Charles Fox, for complainant.

Taft & Perry, for defendants.

OPINION OF THE COURT:

This is a bill in equity, prosecuted by Thomas McNamara, a citizen of the State of Pennsylvania, against Benjamin B. Gaylord and Thomas G. Gaylord, surviving partners of Thomas G. Gaylord & Co., and Thomas G. Gaylord and E. H. Pendleton, administrators of Thomas G. Gaylord, a former partner in said firm, now deceased.

The bill avers, in substance, that in the spring of 1854, after some previous correspondence between the said Thomas G. Gaylord, deceased, and the plaintiff as to the purchase by the latter of an interest in the rolling mill and iron works at Portsmouth, in the State of Ohio, then owned and carried on by Thomas G. Gaylord & Co., on May 10, 1854, a written contract was entered into by which the said Thomas G. Gaylord, Sen., sold to the plaintiff an interest of one undivided eighth in the said mill and works for $15,000, of which $5,000 was to be paid on the 1st of July or October then next, and $2,500 annually thereafter with

McNamara v. Gaylord.

interest till the whole was paid; and it was also agreed that the plaintiff should take charge of the manufacturing department of the establishment, as manager, at a salary of $1,000 per annum.

The plaintiff further avers, that on October 1, 1854, he took possession as a partner and manager, and that he continued as manager until October 1, 1855, and that at that time the profits for the year exceeded $70,000; that in consequence of his objections to certain improvements and additions to the works contemplated by the other parties, from October 1, 1855, he ceased to be the manager and took the place of a shipping clerk, and so continued till September 3, 1856, when he was notified that as he had not fulfilled his contract his connection with the concern must cease; that he left on said 3d of September, at which time the works were stopped to make repairs and improvements. He also avers, that from October 1, 1855, to the date of the stoppage of the works, the profits were $38,664, making an aggregate of profits from October 1, 1854, of upward of $110,000, of which he claims oneeighth part, after deducting payments received by him.

The plaintiff also alleges that he proposed to and requested of Gaylord, on October 1, 1855, to settle with him, and that the $5,000, which he had agreed to pay, should be retained out of the profits to which he was entitled, which was refused; and he avers that he has been unable to procure a settlement, etc., and he prays for a dissolution of the partnership, an account of profits, and a decree for one-eighth part of such profits.

The exhibits and evidence show that on and prior to October 1, 1854, Thomas G. Gaylord, Sen., was the owner of an interest of three-fourths in the mill and works, and that Benjamin B. Gaylord owned the other fourth; and that, in the spring of 1855, Thomas G. Gaylord, Sen., sold and transferred to his son, Thomas G. Gaylord, one-half of his interest, to take effect from October 1, 1854, from which

McNamara v. Gaylord.

date he was therefore a partner. The entire interest was then estimated at $120,000.

Benjamin B. Gaylord and Thomas G. Gaylord have filed their answers, as surviving partners; and the administrators of Thomas G. Gaylord, deceased, have also answered. In their answers the administrators refer to and adopt the answer of Thomas G. Gaylord, Sen., filed by him in a suit brought by McNamara in the Court of Common Pleas of Scioto county, Ohio, which involved essentially the matters now in controversy. It is not necessary to notice in detail the numerous allegations of these answers. They deny explicitly that the plaintiff had an interest in the iron works, as a partner, and aver that he has no claim for an account of profits. They insist that the rights of the parties must be settled by the terms of the written contract of May 10, 1854; that the plaintiff failed to comply with his obligation to pay $5,000 on October 1, 1854, which was the condition on which the interest of one-eighth was to. vest in him; that he has not paid or offered to pay said sum, nor has he in any way been released from such payment; that he was at no time accepted or treated as a partner, and had no connection with the concern except as manager under the contract, for the first year after its date, and subsequently as a shipping clerk, for which he has been fully paid according to the terms of the contract.

There are also averments in the answers to the effect that the plaintiff was incompetent to the discharge of the duties of a manager; and, also, that the contract of May 10, 1854, was entered into by reason of the false and deceptive representations of the plaintiff as to his ability to pay the $5,000, and the other payments specified in the contract, and that he then was and for some time before had been insolvent and wholly unable to meet any pecuniary liability, and therefore that said contract was fraudulent and void.

I do not propose to examine these points in the defense, as there are other grounds which I deem decisive of the merits of this case.