
    WASHBURN & MOEN MANUFACTURING CO., Respondent, v. HENRY P. WILSON, Appellant.
    
      Contracts—application of consideration.—Royalties—accounting for.— Re-issue of patent—when void.—Appeal—when questions must be raised at special term in first instance.
    
    Plaintiff and defendant entered into two written contracts ; by the first, plaintiff licensed defendant to make a certain invention patented by him, for which defendant agreed to pay royalties; by the second, defendant was to continue to pay the royalties and to do other specified things, in consideration of all which plaintiff continued the license and made other covenants unconnected therewith.
    
      Held, in an action for an accounting for royalties during the period of the two contracts, that though the re-issued patent for the use of which they were to be paid, was void, defendant must account for the whole period; that the plaintiff’s covenants could not be applied distributively to defendant’s obligations, as the consideration to plaintiff for his promises was the promises generally of defendant.
    Also, Held, that though the license was the only consideration for the first agreement, the judgment requiring an accounting for that period must be affirmed, though the re-issue were void, as the appeal book shows that' no offer, request, or exception that suggested the difference, was made at the special term, and no modification of the judgment was asked.
    Whether one sued for royalties can defend on the ground that the re-issued patent for the.use of which they are claimed, is void, as showing on its face that it is for an invention substantially different from that described in the original patent, qumre.
    
    
      Before Sedgwick, Ch. J., and Freedman, J.
    
      Decided April 3, 1882.
    Appeal by defendant from judgment entered upon the decision of a judge at special term.
    The action was for accounting, under two written contracts. By the first, the plaintiff, as owner of letters patent No. 66,065, dated June 25,1867, and re-issue, No. 7,388, dated November 7, 1876, licensed the defendant to make for one year, wire bale ties, as described in the patents, and the defendant promised to pay a certain royalty. By the second, the defendant promised to sell to plaintiff a certain patent owned by him, to continue to pay the royalties provided in the first agreement, and to sell to plaintiff wire of a certain kind, at specified rates.
    It was objected by defendant below, that there was no consideration for defendant’s agreement, because the re-issued patent was void, as being for an invention substantially different from the invention claimed by the original patent.
    The court ordered judgment that defendant account, &c.
    Further facts appear in the opinion.
    
      Peter Van Antwerp, for appellant.
    
      Chamberlain, Carter and Hornblower, attorneys, and William B. Hornblower, of counsel, for respondent.
   By the Court.—Sedgwick, Ch. J.

Whether or not the invalidity of there-issued patent, referring, as it does, to the original patent, and showing on its face that it, in itself, irrespective of extrinsic circumstances, is void, distinguishes the present case from Marston v. Swett (82 N. Y. 527; 66 Id. 206), doés'not require examination. It will not, however, be assumed, that the re-issue is invalid.

There were, beyond the license, sufficient legal considerations to support the promises made by the defendant. They were, 1st. To pay $300 'to defendant for a patent applied for. by him ; 2d. To grant him the exclusive right to use his machine for splicing wires, that had already been used for binding bales, and not to license, within twenty-five miles of New York city, any one to make ties under plaintiff’s patent; 3d. To buy at a specified rate scrap iron from defendant; 4th. To pay the expense of obtaining certain patents ; 5th. Not to engage in splicing second-hand wire for bale ties, in. a specified district, during the continuance of the agreement. These considerations cannot be applied distributively to the several obligations of the defendant. For, the consideration to the plaintiff in making his promises, was the promises generally of the defendants.

The learned counsel for the appellant said, on the argument, that if this view was correct as to the second agreement, it could not be applied to the first agreement, as in the latter there was no consideration other than the re-issued patent, and, therefore, the judgment should be modified so far as it required the defendant to account from the time of the first agreement. If this particular called for examination on this appeal, it might have been necessary to definitely decide, as to the effect of the alleged invalidity, upon the first agreement. The question is not here. The case shows that counsel did not present to the court the difference, nor make any request, or offer any evidence, or take any exception, that suggested the difference, or ask for a modification of the judgment.

Judgment affirmed, with, costs.

Freedman, J., concurred.  