Citations
- 233 F. Supp. 119
Full opinion text
HIGGINBOTHAM, District Judge.
This matter is before the Court on cross motions for summary judgment on the first and second counts of plaintiff’s Complaint, and on defendant’s motion to dismiss the third count for failure to state a cause of action.
I.
The first two counts allege defendant’s breach of a tripartite agreement entered into on July 25, 1957, by Dyo-therm Corporation, Turbo Machine Company, and Messrs. Grant H. and Harry E. Brewin.
The agreement is in settlement of a suit initiated by Dyotherm against Turbo. Civil No. 22,232, E.D.Pa., March 13, 1957. It provides, inter alia:
“2. The parties agree to the dismissal with prejudice of the complaint and counterclaim in the above action * * *.
“3. DYOTHERM hereby grants to the BREWINS, their heirs, executors or administrators, the following rights for North and South America and Japan,. and nowhere else, pertaining to the subject matter of the following United States patent applications * * (Emphasis added.)
Particular rights to manufacture and sell are then set forth. Paragraph 3(d) states: “All of the said licenses to the BREWINS include the right to grant sublicenses.”
Paragraph 8 reads:
“The BREWINS shall relicense the rights for which they are licensed under the terms of this agreement to TURBO for a consideration to be agreed upon by the BREWINS and TURBO * *
Plaintiff alleges in count one that defendant has manufactured and sold certain machines covered by the agreement, in areas throughout the world other than-North and South America and Japan..
The parties in this cause have stipulated that plaintiff’s right to recover on the first count will be determined solely on the following issue:
“[Wjhether the settlement agreement of July 25, 1957, together with the accompanying relicense agreement extending from the Brewins-. to Turbo:
“(a) As plaintiff contends, forbids Turbo from manufacturing its-, accused dye boarder within or without the United States of America, for sale outside of North America,. South America or Japan, or
“(b) As defendant contends, does-not so forbid Turbo but limits the' license granted so that any manufacture of its accused dye boarder-for sale outside North America, South America or Japan is unlicensed.”
The focus of the controversy is on-, the interpretation of the phrase “and' nowhere else” in paragraph 3 of the 1957.' agreement, supra.
Plaintiff, in offering its interpretation, xelies on “the atmosphere within which the settlement of the first suit was conducted.” Defendant counters that “the language ‘and nowhere else’ is commonly used in patent licenses to set a geographical limitation upon the scope of the license.” Neither the “atmosphere” of the negotiations nor the usage of certain words in the patent field has been ■established by proper evidence thus far.
The next major area of contention is the meaning of the deposition testimony of Ludwig Schierenbeck, Turbo’s President.
■(P. 18):
“BY MR. SCHIFF:
"Q. * * * Was your understanding * * * that under paragraph 3, [1957 agreement], if you had any machine which did not contain any of the patented Dyotherm patents, .you were free to use this any place without the benefit of any license?
'“A. That’s right.
“Q. Now, you also indicated that you were granted a license on the Turbo machine for certain countries under this paragraph 3.
“A. If we used the Dyotherm Patent. * * *