Holden v. Bernstein Manufacturing Co. , 232 Pa. 366 ( 1911 )

Opinion by

Mr. Justice Potter,

It appears from the record here, that the court below sustained a demurrer to the plaintiff’s bill. The reason is not given, but presumably it was because it was thought there was an adequate remedy at law. If this was the reason, we cannot agree that it is good in this case. The plaintiff sought for an accounting for royalties claimed under the terms of an article of agreement, upon sales of certain articles manufactured by the defendant, under the •specifications of certain letters patent of the United States granted to plaintiff and afterwards assigned by him to the defendant. The character of the accounting required, in order to give to the plaintiff the relief to which he is entitled, is such as to place it beyond the fair reach of a jury. The inventions for the use of which an accounting is sought, pertain to improvements in parts of articles, as for instance in end rails for bed springs, and to other devices in which the inventions were set forth in various written claims. Four different patents seem to be involved, and it is suggested that one of these patents has six claims; another patent has five claims, and another contains three claims. An accounting for royalties upon articles manufactured under some one or more of these various claims would involve an examination of the various articles manufactured, and a comparison of their structure with the elements of the inventions set forth in the claims of the various patents, and it would require also the fixing of the proportionate value of the parts of the articles included within the scope of the claims, to the value of the whole article. These processes would be far too complicated to be submitted to a jury with any reasonable expectation of an intelligent solving by them of the problems involved. Such work requires the services of a chancellor or of a master in chancery. In Adams’s Appeal, 113 Pa. 449, it was held that a bill in equity for an accounting is the proper remedy to recover royalties upon a patented article. It is a familiar doctrine that where a court of equity properly takes jurisdiction of one of the subjects of a contest, it will dispose of the whole matter in controversy between the parties, and thus avoid a multiplicity of suits: Myers v. Bryson, 158 Pa. 246; Gwinn v. Lee, 6 Pa. Superior Ct. 646. This would justify a court of equity, after having taken jurisdiction in this case of the complicated matter of the accounting for royalties, to proceed with the settlement of the other points in controversy between the parties, as to the amount of salary, if any, due to the plaintiff, and as to the amount of the commission due him on sales for any new business developed by him while in the employ of the defendant, in accordance with the terms of the contract.

The judgment of the court below is reversed, the bill is reinstated and the cause is remanded to the court below for further proceedings in accordance with this opinion.