Edward H. Green and Newman-Green, Inc. v. Aerosol Research Company

CUMMINGS, Circuit Judge

(dissenting).

With regret, I find myself compelled to dissent. The opening clause of paragraph 12 of the 1962 settlement agreement conveyed rights only “under Green ’735.” Under paragraph 12(c), Newman-Green granted Aerosol a non-exclusive license under Green ’735. Under paragraph 12(b), Newman-Green covenanted not to sue Aerosol “for alleged infringement of Green ’735.”

Paragraph 13, provided that “Nothing herein [in the settlement agreement] shall be construed to grant to either of the parties, rights under any patents other than those specifically named here*795in * * Since this plain, unambiguous language limits the pertinent rights to those granted under Green ’735, the contract may not be extended to accord rights under subsequent Green ’877.1 Gillette Company v. Travelers Indemnity Company, 365 F.2d 7, 8-9 (7th Cir. 1966); In-Sink-Erator Manufacturing Co. v. Waste King Corp., 346 F.2d 248, 252 (7th Cir. 1965), certiorari denied, 382 U.S. 835, 86 S.Ct. 80, 15 L.Ed.2d 78; Buchanan v. Swift, 130 F.2d 483, 484-485 (7th Cir. 1942). This conclusion is bolstered by the license grant in paragraph 12(c) “for the full term of Green ’735.” That patent expires in 1974, whereas Green ’877 will run until

Paragraph 1 of the settlement agreement acknowledges that neither Newman-Green nor Aerosol shall owe any obligations to each other under various agreements except those owed by virtue of the recognition of the rights of the respective parties in and to Green ’735, Kuffer '154 (U.S. Patent No. 2,913,154) and Green ’040 (U.S. Patent No. 2,587,-040), “which rights are hereinafter set forth.” Paragraph 7 provides that Aerosol shall not have any rights or claims whatsoever in any patents whose application was filed after October 28, 1953; the application for Green ’877 was filed in 1960. Both these provisions also show that the agreement was not intended to cover Green ’877. If Aerosol expected protection under future Newman-Green patents, Aerosol counsel should have proposed a short phrase to give it rights under such patents.2 This was never done, although both parties were represented throughout the lengthy settlement negotiations by experienced counsel. This Court should not rewrite the settlement agreement for Aerosol’s benefit when the terms of that agreement unmistakably show that it was not intended to convey a license under a subsequently acquired patent. Its primary purpose was to settle past disputes rather than to prevent future disputes.

In support of its position, the majority states that an interpretation limiting paragraph 12 to Green ’735 “would render the agreement meaningless.” To the contrary, Aerosol would still retain the following benefits under the settlement agreement:

1. Confirmation of Aerosol’s ownership of Green ’040 and Kuffer ’154.
2. Newman-Green’s agreement that Green ’040 and Kuffer ’154 are valid patents.
3. Royalty payments by Newman-Green under Kuffer ’154 for the manufacture of certain aerosol valve structures.
4. A license and covenant not to sue granted to Aerosol under Green ’735.
5. A release of all accrued claims of Newman-Green, including release of accrued claims for infringement of Green ’735.
6. Newman-Green’s payment of $25,-000 to Aerosol.
7. Settlement of state court and federal court suits (including counterclaims) then pending between the parties.

I agree with the majority that in view of the plain meaning of the contract, no resort is necessary to the circumstances surrounding its execution. In any event, such resort does not call for an interpretation of the settlement agreement different from what is commanded by its face. An early determination of the validity of Green ’877 would be in the public interest. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 330, 65 S.Ct. 1143, 89 L.Ed. 1644. The proper disposition of this case would be to remand it, permitting a trial of the validity and infringement issues.

. In patent ’877, a reinforcing web is inserted in the upper end of the slot disclosed in ’735 “to provide proper metering of the product to be dispensed” from the aerosol container.

. As Newman-Green’s counsel pointed out at the argument, the insertion of “or any other patent” at the end of the opening clause of paragraph 12 would have given Aerosol the protection it now demands.