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than its language seems to imply. Both the face of the patent and the contemporaneous conduct of the parties make it clear that this claim (if not also others) cannot be restricted by interpretation. It is either valid as broadly as it reads or invalid because too broad.

[4] Further, it appears without dispute that the original purpose of the company was to get a patent which would cover the product which it was making, then and continuously thereafter, as well as the product of all other manufacturers then operating; that unless the claims did cover its product and at least a part of the others, it had no object in continuing for years its effort to get this patent; that the four claims added after Robinson's order for immediate issue were formulated by him and by the attorneys with this

broad purpose, which was then regarded by both of them as sufficiently accomplished. Claim 9 is one of those so added. To permit the company now to say that this patent does not cover its product would be to allow it to repudiate the whole theory upon which it dealt with Robinson for years and which it allowed him, if it did not lead him, to accept as the basis of their continuing relations.

[5] 6. In its answer and in amendments thereto, the company set up a large number of earlier patents and inventions, and sought to take testimony concerning them. The court declined to allow such testimony, and struck out these paragraphs from the answer. In this action, there was no error, so far as concerns the rights of the parties before decree. This was not, in any sense or degree, an infringement suit. If the contract of license counted upon was valid and in force, the licensee could not question the validity of the patent; if the license contract could not be enforced, that was the end of the suit. It is true that a licensee may show the state of the art, as an aid to determining the construction of the patent; that was not the company's effort here. Not only was each stricken paragraph of the answer introduced by the statement that the Robinson patent was anticipated or was made invalid by the older patents and the uses recited; but, as we have already held, there was no room for any construction permitting the conclusion that the patent did not cover the company's product. The company's right to show the patent's invalidity as affecting future royalties will be considered hereafter.

7. Paragraph 23 is said to show that the contract was in violation of the Anti-Trust Act (Act July 2, 1890, c. 647, 26 Stat. 209), and, therefore, void. This conclusion cannot be supported. The paragraph is ambiguous. It is obvious that a patent, giving such a broad monopoly as was here expected, might rightfully be used as the basis of "trade relations" with other manufacturers, looking toward a complete control of the coaster brake business. Doubtless it could be used unlawfully to the same end; and it appears that the company did proceed to enter into a combination which the government caused to be dissolved because it was in violation of the Anti-Trust Act. There is nothing to show, however either that this unlawful combination was essentially dependent upon the Robinson contract with the company, or that Robinson knew that the company intended to abuse the advantages it derived from the contract rather than to use them lawfully-much less that Robinson participated in any such intent.

Under these circumstances, the company cannot be heard to make this defense.

[6] 8. It results from the views so far expressed that the company must pay royalties to Robinson; but when these payments should begin and how long they should continue must be determined. The language of the contract is very peculiar (see paragraphs 8, 9, 10, quoted above). Robinson was experienced in the soliciting of patents, as were the attorneys representing the company, and they both knew that the shape which the claims of a patent would take could never be determined till the patent issued, since rejections and amendments might come even after the final fee was paid and the printing in progress. It is, therefore, not easy to understand how they could contemplate the accruing of royalties contingent upon the terms of a patent to be obtained, and which royalties should, nevertheless, accrue before the patent issued; yet they make very express provision for commencing the royalty period at the time when there was a final award in the interferences. We see no way to construe all these provisions and to make them intelligent and mutually reconcilable and applicable to the complications caused by the reissue, except to say that nothing was payable or due until the patent reissued, but that, when it did so reissue, so that the terms of its claims were finally known, the royalty period, upon whatever the claims turned out to cover, should date back to the specified final award. This construction will directly modify the decree below only as to the matter of interest. The date of this final award is in controversy.

When the contract was made, Robinson was in interference with Townsend and Copeland. These interferences were decided and priority upon the broader issues awarded to Robinson by the order of the Court of Appeals of the District of Columbia, on May 29, 1911. Immediately, another interference was declared between Robinson's same basic application and another application of Copeland. This interference was not finally settled until January 6, 1913, when the Court of Appeals of the District of Columbia decided that this second controversy was within the issues of the former one and was res judicata. Robinson now claims that the royalty should begin at the date of the final determination of the first interference; the company contends that any liability which may exist cannot reach back of the final decision in the second interference. The company is right in its contention. When we undertake to apply to the situation, as it actually developed, the language of paragraph 9 of the contract, we see there is ambiguity. The reference is to the final award of priority in interference proceedings "in which Robinson is involved with other contestants." This, standing alone, would normally refer to the interference proceedings in which he was involved on July 6, 1908, the day of the contract; and yet, when we observe that it could hardly have been intended that royalties should accrue upon an invention while there was pending an interference which might result in a patent upon the same thing to some one else, it may be that “is involved” should be read as meaning "is involved from time to time as the application progresses."

It is also urged with much force that under the special circumstances here existing, the first interference and the second should be

considered as one. Indeed, the decision of the Court of Appeals leads almost to this conclusion. However these things may be, there is clearer ground for the conclusion we have stated. One of the claims, No. 11, of the Robinson patent, as first issued, and a claim which it must be presumed was an essential part of the monopoly which the parties were contracting about, was first made by Copeland in his application that went into the second interference and never was present in Robinson's application until he annexed it by right of conquest after the second interference was finished. In addition to this, claim 9, which is, from most points of view if not from all, the broadest claim of the patent and which forms Robinson's chief reliance in the present suit as a basis of his claim for royalty, never was present in his application until after this second interference was finished. This claim was one of the four inserted by the attorneys during the two weeks' delay allowed after Robinson's personal orders that the patent issue at once. Certainly only the clearest and most unambiguous language could justify the accruing of royalty before the second or rehearing interference was finished and the patent for the first time took substantially its final shape; and, instead of this being clear and unambiguous, the natural inferences are all the other way. If there were doubt about this, it would be solved by Robinson's letter of May 14, 1913, in which he says:

"Now it is pointed out that the final award of priority in favor of Robinson in interference proceedings in the matter of the application of October 8, 1897,' was the issue of the decision of the Court of Appeals in Interference No. 33,840, dated and decided January 6, 1913, awarding priority to Robinson. That tinished the interference, and any delay since that time has been in the hands of counsel. It seems clear, therefore, that the accumulation of royalty must be computed from that date."

9. We have found that Robinson was in fault for not executing or tendering the formal exclusive license. He should have done so, when the original patent issued, and when his only claimed reason to the contrary disappeared. If it be thought that the almost immediate application for reissue postponed this duty, then he should have done so upon the reissue. At the latest, he should have distinctly made such tender upon filing this bill, instead of relying on the mistaken theory that the formal license was unnecessary. At the same time, we have found action by the company, continuing up until after the filing of the bill, such that it cannot be permitted to rely upon the lack of this formal license to destroy its contract obligations to Robinson. The question is whether, by permitting the exclusive license to be given now, we can restore substantially the situation which would have existed if it had been given when the patent issued or tendered when the bill was filed, and can put the company in substantially the same shape as if it had then, as was its duty to do, accepted the license and proceeded with the contract. It may be that changes in the manufacturing or trade conditions during the interval, impair such restoration, but the burden was upon the company to make proof to this effect, and it has not done so.

The record indicates only one difficulty. Paragraph 9 of the contract provides for the company the only escape from the continued payment of royalties (unless by paragraph 22). If the formal license had been

delivered when the patent issued, and the company had proceeded under the contract, and if it had been of the opinion, as it now is, that the patent was invalid, it would at once have begun or caused to be begun some suit which would lead to a judicial determination and so either establish the patent or end the royalties. We make allowance for the reissue delay and give the company the benefit of whatever doubts there ought to be, if we assume that, acting with diligence, it could have secured such judicial determination within two years from the original issue, or by July 8, 1915. It is somewhat arbitrary, but essentially fair to assume that if the royalties ought to terminate under paragraph 9, the necessary judgment would have been pronounced as early as that date, that it would not have occurred earlier, that, until that time, the liability of the company for the contract royalty was inevitable, but that the delay from that time to this in instituting proceedings which may lead to that result has been so far the result of Robinson's default and of the confusion and uncertainty thereby created that he must allow further reasonable opportunity for that test, before exacting a further performance of the contract.

After the suit was commenced, the company seems to have executed a transfer to Robinson of everything that had been assigned to it. This was never completed by delivery and acceptance, but the record indicates that it may have been recorded in the Patent Office; if so, Robinson should at once execute and record a sufficient release and quitclaim back to the company of everything so apparently transferred. At the same time and within 30 days after the mandate goes down, he should execute and deliver to th company, or deposit with the clerk of the court below for delivery to the company, an exclusive license, under the reissue patent, but otherwise in the form prepared and tendered to him on July 8, 1908. Thereupon, the company must pay to him the prescribed minimum royalties for ten quarters commencing with the quarterly payment due April 6, 1913, and ending with that due July 6, 1915, and with interest at 6 per cent. from the date of the reissue, on payments due theretofore, and with interest at the same rate from the date of each maturity on payments due thereafter. There should also be an accounting, if desired, to ascertain whether more than the minimum accrued during these ten quarters, and, if so, the excess amount should be paid as soon as it is fixed. If Robinson should fail to execute and record the reassignment (if by record of assignment to him this has become necessary) or to execute and deliver the license, his bill will be dismissed. If the company should fail for 30 days after the delivery of the license to pay the minimum royalty for the ten quarters and interest, it will lose its right to any further consideration, and it must pay at once, also, the remainder of the $20,000 agreed minimum, with interest, and be subject to the general accounting as provided in the decree appealed from. If the company does make this payment for the ten quarters, thereupon all further proceedings (except the accounting as to the excess in these ten quarters) should be stayed for 60 days. Within this period, the company may institute such proceedings as it may be advised, for the purpose of obtaining the judicial decision contemplated by paragraph 9. If it elects to bring an infringement suit against another manufacturer, Robinson must join therein as

provided by paragraph 18. So long as the selected proceeding is prosecuted with the utmost diligence, the stay may continue. If, upon the final determination of such proceeding the patent is found invalid within the meaning of paragraph 9, the company will be excused from all payments, except the royalty (both minimum and excess) for the first ten quarters. Lacking such result, the stay will expire and the accounting will proceed in the court below for all the intervening period. All time limits herein mentioned are subject to modification, in the discretion of the court below.

[7] We see no reason why the company, if it so elects, may not proceed in this cause to obtain the decree which shall establish the validity of the patent or the contrary. The general rule that a licensee may not dispute the validity of the patent must yield, as far as necessary, to an express provision providing for a decree of invalidity as the means of ending the contract. Probably the rendering of such a judgment in a suit prosecuted by Robinson and the company against a third party infringing was the thing specifically in the mind of both parties; but if the licensee, under a contract like this, is later convinced that the patent is invalid, suit in a proper court brought by the licensee against the licensor is the most direct and sure way to get the question decided, without the suspicions of collusion sure to arise if the licensee were prosecuting a suit which it brought against a stranger and in which it wished to fail. If this may be done by direct suit, it surely may be done by answer, under the provisions of general equity rule 30 (198 Fed. xxvi, 115 C. C. A. xxvi), in a suit in the United States District Court.

The company, in its answer and amendments thereto in this case, laid all foundation for obtaining such a judgment, except that it did not pray therefor. It set up the invalidity of the patent, not as a basis for obtaining a decree terminating the contract, which it might have done, but as a basis for defending against current liability under the contract, which it could not do. The election which we now permit to institute proceedings looking to such a judgment may be exercised (if defendant desires) by reforming its answer in this cause.

The proper interpretation of "null and void" in paragraph 8, we cannot now consider. Whether this phrase means utterly void as to all claims, or whether it means void as to those claims which might purport to secure the monopoly contemplated by the parties, is a question to be later decided by the tribunal to which it is presented.

The decree below must be reversed, and the case remanded for proceedings in accordance with this opinion. The appellant will recover costs in this court. Costs in the court below will be in the discretion of that court.

On Motion for Rehearing. PER CURIAM. On application for rehearing, the Miami Company, for the first time, brings to our attention the claim that Robinson accepted the retransfer to him of everything which the company had received from him, and to which attempted retransfer the opinion refers. This suit was commenced on July 13, 1914. On November 2, 1914, by an 'amendment to the answer, the defendant alleged that it had renounced the contract by notification to Robinson in a letter dated

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