
    AMERICAN STEEL FOUNDRIES v. LAUGHLIN et al.
    District Court, N. D. Illinois, E. D.
    January 8, 1927.
    No. 635G.
    
      Russell Whitman and Whitman Taylor, both of Chicago, Ill., for plaintiff.
    Joshua R. H. Potts, of Chicago, Ill., for defendants.
   WILKERSON, District Judge.

Much of this bill is framed as if it were for relief against tbe fraud of defendants in connection with the assignment. There are averments as to suppression of facts and conspiracy to extort money for tbe patent to be issued and insinuations of unprofessional conduct. Defendants, however, offer to repay tbe $5,000 if plaintiff will reassign tbe patent. Plaintiff rejects this tender, repudiates any design to seek a rescission, and adopts and stands on the contract. íhe allegations of fraud, therefore, seem to.have no place in tbe case, except to give some kind of color to it. It is only fair to say, since that issue was injected into tbe case, that tbe allegations of fraud and unprofessional conduct against •defendant Potts are wholly unsustained by proof.

Plaintiff seeks a specific performance of tbe agreement “to join in signing any lawful and proper application for” a reissue of tbe patent. It is an essential requirement to a reissue that tbe error must have arisen by inadvertence, accident, or mistake. Tbe proof shows that the alleged error sought to be corrected by tbe voluminous claims submitted to defendants did not arise by inadvertence, accident, or mistake.

It is also an essential requirement to a reissue that tbe new patent must be for tbe “same invention.” Stafford Co. v. Coldwell-Gildard Co. (C. C. A.) 202 F. 744; Northrop v. Draper Co. (C. C. A.) 239 F. 719. In Northrop v. Draper Co., supra, tbe defects which it was sought to remedy were held to be obvious defects, and the intention of tbe .inventor was held to be manifest upon a consideration of tbe specifications and claims. Tbe alleged defects here are not obvious, and it is clear that it was the intention of tbe inventor to limit tbe claims to ear wheels.

Tbe terms of a contract which is sought to be specifically executed should be so precise that neither party could reasonably misunderstand them. If tbe contract is vag'ue or uncertain, a court of equity will not exercise its extraordinary jurisdiction to enforce it, but will leave the party to his legal remedy. To entitle a party to specific performance of a contract, it must be so certain and unambiguous in its terms and in all its parts that tbe court can require tbe specific thing contracted for to be done. Colson v. Thompson, 2 Wheat. 336, 341, 4 L. Ed. 253; Dalzell v. Dueber Watch-Case Mfg. Co., 149 U. S. 315, 13 S. Ct. 886, 37 L. Ed. 749; Threlkeld v. Inglett, 289 Ill. 90, 97, 98, 124 N. E. 368; Louisville N. A. & C. Ry. Co. v. Bodensehatz-Bedford Stone Co., 141 Ind. 251, 39 N. E. 703. Nor will specific performance be granted in a ease whieh calls for tbe supervision of tbe court, or where too great a burden is imposed upon tbe court and a degree of expert knowledge required, which neither tbe court nor its officers can be expected to possess. Javirena v. Central Altagracia, 217 U. S. 502, 508, 30 S. Ct. 598, 54 L. Ed. 859; Louisville N. A. & C. Ry. Co. v. Bodensehatz-Bedford Stone Co., supra. [5] An examination of tbe multitude of claims which tbe court is asked to require defendants to adopt as tbe basis of an application for reissue shows that plaintiff has failed to make a showing for specific performance. Tbe court is asked, not to aid in tbe correction of obvious defects, but to become a patent attorney and to formulate new claims, which shall be for the same invention as the one covered by the old claims. Plaintiff’s bill states that, before tho assignment was executed, plaintiff’s patent attorney examined the patent and gave an opinion that invention disclosed by the patent was apparently of much broader scope than that covered by tho form of tho claims.

Plaintiff’s attorney did not disclose to defendants the scope of the reissue which he had in mind under tho clause of tho assignment in question. He should have brought it to defendants’ attention, and tho contract, if it had been executed on that basis, should have been specific and definite. Plaintiff’s attorney carefully concealed Ms notion that he could have a patent limited to ear wheels expanded by reissue to cover the entire field. He permitted the assignment to be executed by defendants under the manifest understanding, as shown by the correspondence and all the circumstances, that the patent was limited to car wheels. Having obtained the assignment, he springs the point and seeks the aid of a court of equity to coerce the defendant into executing an application for more than 50 claims, covering a field many times as broad as the one into which plaintiff purchased. Plaintiff’s showing is not sufficient for specific performance, nor does it conform to those principles of equity -and fair dealing upon which all equitable relief is granted.

Plaintiff seeks an inquisition into application No. 514,081, now pending in the Patent Office. An inventor, by assigning one patent, does not give to the assignee the right to inquire into applications pending in tho Patent Office for other patents. Only one valid original patent can be granted to an inventor on one invention; and, if a plurality oC such patents are granted, all except the first are void. Miller v. Eagle Mfg. Co., 151 U. S. 186, 197, 14 S. Ct. 310, 38 L. Ed. 121; Suffolk Co. v. Hayden, 3 Wall. 315, 18 L. Ed. 76.

Plaintiff has exactly what it paid for— the first patent oh this invention as applied to oar wheels. If it does not like its bargain, defendants offer to take back the patent and repay the money. If application No. 514,081 ripens into a patent, such patent cannot defeat any of the rights of plaintiff under its first patent, even if the second patent covers the same invention as the first, in whole or in part. And it is manifest that, except for the point which plaintiff’s patent attorney was carrying around carefully concealed in his mind, the pending application is not for the same invention as the one covered by the patent which plaintiff purchased,, and which in unequivocal terms is limited to car wheels.

As to the discovery, it may be further observed that, where tho bill is for relief and discovery, the hill cannot be sustained solely for the sake of the discovery.

Bill and counterclaim will be dismissed for want of equity.  