Gayler v. Wilder/Opinion of the Court

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Gayler v. Wilder by Roger B. Taney
Opinion of the Court
Court Documents
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Opinion of the Court
Dissenting Opinions
McLean
Daniel

United States Supreme Court

51 U.S. 477

GAYLER  v.  WILDER


THIS was a writ of error to the Circuit Court of the United States for the Southern District of New York.

The defendant in error (who was plaintiff in the court below) brought an action against Gayler and Brown (the plaintiffs in error), for an alleged infringement of a patent right for the use of plaster of Paris in the construction of fire-proof chests.

In the declaration, it was averred that one Daniel Fitzgerald was the original and first inventor of a new and useful improvement in fire-proof chests or safes, and that letters patent were granted him therefor, bearing date the 1st day of June, 1843. The patent was in the usual form, and was set out in the declaration, the specification annexed to which was as follows:--

'To all whom it may concern:

'Be it known that I, Daniel Fitzgerald, of the city, county, and state of New York, and a citizen of the United States, have discovered and made an improvement, new and useful, in the construction of iron chests, or safes, intended to resist the action of fire, and for the safe-keeping and preserving books and papers, and other valuables, from destruction by fire, which I call a Salamander safe or chest.

'The following is a full and exact description of the safe or chest, with my improvement combined therewith:--

'I make two iron chests, in the common and ordinary way of making iron chests, which is well known to those engaged in this branch of business, one smaller than the other, which, when the safe is put together, forms the inner chest, or inner part of the safe. The other chest is made about three inches larger than the inner one, and so as, when put together, it will form the outer part or crust of the safe, and leave a space between the inner and outer chests of the safe of about three inches; which space may vary a little, more or less, when the chests are put together, but should be the same all round, and in every direction. The inner and outer doors, where two doors are used, are prepared in the same way, leaving a space, as above, between the inner and outer crust of each door, which space is left for a like purpose with that left between the inner and outer chest of the safe. Where one door is used, it should be made in the same manner, leaving a like space between the inner and outer crust or face of the door, and for a like purpose, and should be fitted to the chest or safe with great accuracy. The edges and openings for the doors are to be neatly finished, as in other chests. I then take plaster of Paris or gypsum, and, having boiled it or baked it in an oven, and calcined it, and reduced it to a powder, I mix it with water till it is about the consistency of cream or thin paste, so fluid as that it may readily be poured into the space left as above to receive it, and I then fill all the space with the plaster of Paris, putting in some sheets of mica between the inner and outer chest, to aid, if necessary, in checking the progress of the heat.

'But where pains are taken to have all the space left for the purpose properly filled with the plaster of Paris, as above, so that when set it will expand and adhere firmly to the surrounding parts, and completely fill the whole space, and all the cracks and joints, the mica may be dispensed with, and every other substance, and the plaster may be used alone. It may also be reduced to a powder, without being prepared as above, and used in that state; but I have not found it as good.

'The inner case or chest may be made of wood instead of iron, as for a bookcase, and if the space left between that and the outer chest be filled in the manner and with the materials above named, it will make a very durable safe, that will effectually resist the fire, as I have found by experience; but the safe may not be so strong or durable, though somewhat cheaper.

'The above composition or preparation of gypsum may be mixed with several other articles not contrary to its nature, with a view to increase its efficacy in resisting the action of fire; but from my experience I doubt if they have much effect. The gypsum alone, when properly prepared, and properly placed in the space left to receive it, and made to fill it completely, is quite sufficient to resist, for a long space of time, the most intense heat. The chemical properties of this article are such, that, by the application of intense heat, it imparts a vapor or gas, or some other properties, which effectually stay the progress of the fire, and arrest the influence and effects of the heat; this I have ascertained by various experiments; and I believe I am the first man that discovered the utility, and devised the method of applying gypsum, or plaster of Paris, to increase the safety of an iron chest. I am not aware that this article was ever used for the purposes above set forth, until I used it in the manner above described.

'I therefore claim, as my discovery and invention and improvement, the application and use of plaster of Paris, or gypsum, in its raw state, or prepared as above, either alone or with mica, in the construction of all iron chests or safes, in the manner above described, or in any other manner substantially the same.

DANIEL FITZGERALD.

'Witnesses:-G. H. PATTERSON,

BEVERLEY R. HENSON, Jr.'

It was also averred in the declaration, that before the date of said letters patent, to wit, on the 7th day of April, 1839, the said Daniel Fitzgerald made an assignment, which was duly recorded in the Patent-Office of the United States, on the 1st day of June, 1839, as follows:--

'Whereas I, Daniel Fitzgerald, of the city, county, and state of New York, have invented certain improvements in safes, which invention I call the 'Salamander safe,' for which I am about to make application for letters patent of United States: And whereas E. Wilder, of New York aforesaid, has agreed to purchase from me all right and title, and interest which I have, or may have, in and to the said invention, in consequence of the grant of letters patent therefor, and has paid to me, the said Fitzgerald, the sum of five thousand dollars, the receipt whereof is hereby acknowledged:

'Now, this indenture witnesseth, that for and in consideration of the said sum to me paid, I have assigned and transferred to E. Wilder aforesaid the full and exclusive right to all the improvements made by me, as fully set forth and described in the specification which I have prepared and executed preparatory to obtaining letters patent therefor. And I hereby authorize and request the Commissioner of Patents to issue the said letters patent to the said E. Wilder and his legal representatives.

'In testimony whereof, I have hereunto set my hand, and affixed my seal, this 11th day of April, 1839.

DANIEL FITZGERALD. [SEAL.]

'Witnesses:-OWEN G. WARREN,

CHARLES H. FOSTER.'

The declaration then proceeded as follows:--

'And the said plaintiff further saith, that the said Enos Wilder, in his lifetime, after the making of the said assignment by the said Daniel Fitzgerald to the said Enos Wilder, as afore mentioned, and before the committing of the several grievances hereinafter mentioned, to wit, on the first day of September, in the year of our Lord 1843, and within the Southern District of New York aforesaid, did execute a certain instrument or agreement to the said plaintiff, whereby the said Enos Wilder, in consideration of the agreement made with the said plaintiff, and of one dollar to him, the said Enos Wilder, in hand paid by the said plaintiff, bargained, sold, conveyed, and assigned to the said plaintiff all the right, title, and interest of him, the said Enos Wilder, in and unto the patent granted to the said Daniel Fitzgerald, for an improvement in fire-proof safes and chests, by the use of prepared gypsum, dated June 1, 1843; and of which patent he, the said Enos Wilder, was the sole owner and assignee, as will appear by the records of the Patent-Office; and which patent he, the said Enos Wilder, had good right to sell and convey to the said plaintiff, to be by him, the said plaintiff, held as his own property, free from all claims from the said Enos Wilder, or any one claiming under him, the said Enos Wilder, as by the said instrument or agreement, sealed with the seal of the said Enos Wilder, ready in court to be produced, will, reference thereunto being had, fully and at large appear.'

This last-mentioned instrument was averred to have been recorded in the Patent-Office of the United States on the 10th day of October, 1843.

It was then averred, that, by virtue of the last-mentioned instrument, plaintiff became, and ever since hath been, sole owner of said improvement, & c., yet, the defendants well knowing, &c.

The defendants pleaded the general issue, and gave notice that they would offer evidence that Daniel Fitzgerald was not the first and original inventor of the improvement patented.

The bill of exceptions was as follows:--

BENJAMIN G. WILDER v. CHARLES J. GAYLER AND LEONARD BROWN.

Be it remembered that, on the trial of the aforesaid issue, the plaintiff, to maintain the same, after having read said patent in evidence as set forth in the declaration, read the following conveyance and agreement, which was duly recorded, and a copy of which was, at the date of said patent, indorsed on the same, viz.: -

[Here was inserted the conveyance from Fitzgerald to Enos Wilder of the 11th of April, 1839, already set out in full in the declaration.]

And thereupon the defendants insisted that said instrument did not convey the legal title of said patent to the said Enos Wilder, and that, upon such conveyance, he could not have brought a suit on the same; but said court decided that said instrument operated to convey the interest in said patent to said Enos Wilder, so that, during his life, he could have maintained an action at law on the same; to which opinion of said court the counsel for the defendants then and there excepted.

And the plaintiff then read the conveyance from said Enos Wilder to him, as stated in his said declaration, which he insisted made out a right in him to sustain his aforesaid action; but the defendants, to show that, after the date of the conveyance to the plaintiff, and before he commenced this action, he made, executed, and delivered to Silas C. Herring, Esq., the following agreement and conveyance, namely:--

'Benjamin G. Wilder agrees with Silas C. Herring to grant to him the sole and exclusive right to make the safe, called the Salamander safe, according to the terms and upon the plan pointed out and described in the patent and specification of Daniel Fitzgerald, which patent is dated June 1, 1843, and was assigned to Enos Wilder, and by him to Benjamin G. Wilder, who now owns the same; and this license is to be for the city, county, and state of New York; and said Herring is to have and enjoy the full and exclusive right to make and vend said safes in the city, county, and state of New York, and nowhere else; the said Herring is to have the same for the residue of the unexpired term of said patent, with all the improvements which may be made in the manufacture of said safes which said B. G. Wilder may have a right to use during said term; and said Herring agrees that said Wilder may use all the improvements which he may make, or have a right to use, during said term. In consideration whereof, said Herring agrees with said Benjamin G. Wilder to pay to him, for the use of the right aforesaid, one cent a pound for each and every pound said safes may weigh when finished and sold; which sum is to be paid monthly so long as said patent remains in full force, and until the same has been set aside by the highest court of the United States to which the same may be carried; but said Herring agrees to pay the one cent a pound for the space of two years, at all events, and whether said patent shall be declared good or not. If sustained, then said Herring is to pay as aforesaid for the full term as aforesaid. All the safes so made and sold by said Herring are to have said Wilder's patent marked thereon, the same as heretofore, in a plate, or cast in letters, 'Wilder's patent safe.' Said Herring agrees to keep an accurate account of all the safes by him made, or caused to be made, under said contract and patent, with the weight of each when sold, and the names of the persons to whom sold, and their places of abode, and to render said account monthly, if so often called on for it, and to pay accordingly. Said Herring is to manufacture all the safes he may sell, or offer to sell, under and according to said patent, with such improvements as he may have a right to use, and be marked as above with the words, in large, legible letters, 'Wilder's patent safe.' Said Wilder reserves to himself the right to manufacture, in this city and state of New York, or elsewhere, safes to sell out of this state and city; but if sold within this state or city, then said Wilder is to pay said Herring one cent a pound on each safe so made and sold within this city or state. Said Wilder is not himself to set up or establish, nor authorize any one else to set up and establish, any manufactory or works for making Salamander safes, or safes similar to said Salamander safes, at any place within fifty miles of this city. Said Herring is to make all safes like Wilder's, and not vary in any substantial part therefrom, with such improvements as may be added.

'In presence of

S. P. STAPLES, Witness to both signatures.

'New York, January 6th, 1844.

'If said patent should not be decided to be good till the end of three years, then for the time over the two years, till decided good, said Herring pays nothing. It is further understood and agreed, that all safes made by said Herring, or in the making of which, or the selling thereof, he shall in any way be directly or indirectly concerned, consisting of a double case or box with the intermediate space filled with plaster or any non-conducting substance, shall be considered within this agreement, and be paid accordingly.

B. G. WILDER,

SILAS C. HERRING.'

'(Received and recorded 30th January, 1844.)'

And thereupon the defendants insisted that the plaintiff had parted with all his interest in said patent by virtue of said agreement, so that he could not sustain his aforesaid action. But said court decided that the plaintiff had not, in and by said agreement, so far parted with his interest in said patent as to deprive him of the right to sustain his aforesaid action; to which opinion of said court the defendants did then and there except.

And the defendants then and there objected, that the invention and improvement, set forth and claimed in said patent as the invention of the patentee, was not the subject of a patent; that it was the mere application of an old, well-known material to a new purpose, which they insisted could not be the subject of a patent. But said court overruled said objection, and instructed the jury as herein set forth; to which, as well as to the said instructions to said jury, the defendants excepted.

And the plaintiff, to maintain his aforesaid issue, called sundry witnesses to prove, and claimed that he had proved, that he made the discovery which was the foundation of his invention and improvement as early as some time in the year 1830; that he made experiments in various ways, to test the utility of his discovery and improvement, at different times, in the different years from 1830 to 1836, when he applied for his patent; and that he pursued with due diligence that application until he obtained his aforesaid patent; and that the delay which had arisen in obtaining said patent was not caused by the fault or negligence of the patentee, or his assignee, Enos Wilder, nor any one else, but arose from the burning of the Patent-Office, and other causes not under the control of the applicants for the patent; and that the defendants had infringed said patent, as set forth in said declaration.

And the defendants introduced evidence to prove, and claimed that they had proved, that said Daniel Fitzgerald was not the first and original inventor of what he claimed in said patent as his improvement. Among other witnesses, James Conner testified, that, between 1829 and 1832, he was engaged in business as a stereotype founder, and, knowing that plaster of Paris was a non-conductor of heat, he constructed a safe with a double chest, and filled the space between the inner and outer one with plaster of Paris,-the same, substantially, as testified to and claimed by Fitzgerald, except there was no plaster used on the top of the safe. It was made for his own private use in his establishment, and was used by him as a safe from the time it was made till 1838, when it passed into other hands. It was kept in his counting-room while he used it, and known to the persons working in the foundery.

This testimony was confirmed by his brother, John Conner, except that he fixes the time of constructing the safe in the year 1831 or 1832. But one safe was made by Conner, and since it passed out of his hands he has used others of a different construction.

The defendants also claimed that, if said Daniel Fitzgerald was the first and original inventor of said improvement, as he claimed, yet that he had made said iron safes, and sold them, under such circumstances as that he had thereby abandoned the same, and suffered the same to go into public use in such manner as to lose all right to said invention and improvement, if any he ever had.

And the court thereupon instructed the jury that, if they found that Daniel Fitzgerald, the patentee, was the first and original inventor of the said improvement claimed in said patent, and that the use of plaster of Paris, in combination with and in the construction of an iron safe, is new and useful, as in the specification of said patent is set forth and claimed, then they would find that the patent was valid, and protected the invention and improvement as claimed, unless the plaintiff, or those under whom he claimed, had abandoned said improvement to the public, and suffered the same to go into public use before the application for said patent, of which facts the jurors were the judges.

And said court further instructed said jury, that if they found that the use made by James Conner of plaster of Paris was confined to a single iron chest, made for his own private use after said Fitzgerald's discovery and experiments, then it was not in the way of Fitzgerald's patent, and the same was valid; but if the jury found that said James Conner made his said safe, as claimed, and tested it by experiments before Fitzgerald's invention and improvement, and before he tested the same, then said Fitzgerald was not the first inventor, as claimed, and was not entitled to said patent.

The court further charged, that, independently of these considerations, there was another view of the case, as it respected the Conner safe: that it was a question whether the use of it by him and been such as would prevent another inventor from taking out a patent; that if Conner had not made his discovery public, but had used it simply for his own private purpose, and it had been finally forgotten or abandoned, such a discovery and use would be no obstacle to the taking out of a patent by Fitzgerald, or those claiming under him, if he be an original, though not the first, inventor or discoverer of the improvement.

And said court, in summing up said case to said jury, further instructed them, that if they found that Daniel Fitzgerald was the first and original inventor of said improvement, as set forth in said patent, and had not abandoned or dedicated the same to the public, but had, with reasonable diligence, pursued his invention till he had perfected the same, and used due diligence in applying for, and in pursuing his application for a patent, until he obtained the same, and if they found the defendants had made and sold safes, as charged in the plaintiff's declaration, then they would find their verdict for the plaintiff for such actual damages as they judged just and reasonable; but if they found otherwise, then they would find for the defendants. To each and all of these instructions given to the jury, the counsel for the defendants excepted.

And forasmuch as the facts aforesaid, and the decisions of the court thereon, do not appear of record, the defendants pray that this their bill of exceptions may be allowed.

Filed 23d February, 1848.

S. NELSON. [SEAL.]

The cause was argued by Mr. Cuyler, for the plaintiffs in error, and by Mr. Staples and Mr. Webster, for the defendant in error.

Mr. Cuyler, for plaintiffs in error.

1. The second error assigned is, that the learned judge erred in ruling that the conveyance of April 11th, 1839, by Fitzgerald to Enos Wilder, of the invention for which he was about to seek a patent, operated to convey said patent to Enos Wilder, so that in his lifetime he could have maintained thereon an action in his own name.

This conveyance is dated April 11th, 1839. The patent did not issue until 1843, and then it issued to Fitzgerald, the inventor, and not to Enos Wilder, the transferee.

It will be readily conceded that the right of an assignee to sue in his own name must, if it exist, be statutory. But no section of any patent law in force bestows this right upon the assignee of an improvement about to be patented, such as was Enos Wilder.

The act of 1793 says, every invention shall be assignable. The eleventh section of the act of 1836 provides that 'every patent shall be assignable in law,' etc. It speaks of the 'exclusive right under any patent,' and of 'the thing patented.' Yet here there was no patent. The assignment is of an improvement intended to be patented. The patent did not exist until four years afterwards, and then it issued to the inventor, and not to the assignee of the improvement.

The sixth section of the act of 1837 provides for this very case, by permitting the issuing of the patent in such cases directly to the assignee of the improvement. Which should have been, but was not, done in this instance.

As no statute, therefore, creates a right in the assignee of an unpatented improvement to sue in his own name, it is submitted that Enos Wilder was and equitable, but not a legal, holder of the title to this patent, and that the learned judge erred in his ruling on this point.

2. The third error assigned is, 'that the learned judge erred in ruling that the agreement of B. G. Wilder and Silas C. Herring, dated January 6th, 1844, did not divest the said B. G. Wilder of all his interest in the patent, so far as the state of New York was concerned, and that the plaintiff could thereafter maintain his action.'

By its terms, it expressly divests the plaintiff, for the remainder of the time of the patent, of all interest in said patent, so far as the city, county, and state of New York are concerned, and imposes upon the plaintiff a penalty to prevent the exercise of any rights by him under said patent in that state.

How, then, can damage be alleged, where the right said to be invaded has no existence? Or rather, how can the plaintiff suffer damage by the invasion of a right, the whole property in which has been passed by him to another?

The hardship of this doctrine will be more apparent when it is considered that, if the plaintiff recover, the defendants will not be thereby exonerated from liability to Herring, the local assignee, but may be held accountable to him, and thus be compelled to pay these very damages a second time to another party.

There can be no damage without an injury done to some right possessed by the plaintiff. But here the plaintiff possesses no right. How, then, can he be damaged?

By this agreement, the advantages and profits of the patent in the city and state of New York are the property of Herring; and yet, if the plaintiff recover damages in this action, he will indirectly take to himself those profits, and thus contravene his own agreement. Herbert v. Adams, 4 Mason, 15; Park v. Little, 3 Wash. C. C., 196, 197.

3. The fifth and sixth errors assigned have relation to the instruction given by the learned judge with regard to the Conner safe.

It is submitted that, by the requirements of the patent law, the patentee must be not only an original inventor, but the original inventor, and that the patent will in all cases be defeated by proof of a prior invention.

It is especially urged that, even if the doctrine of the learned judge, in his charge, were correct, it is inapplicable to a case where the invention had been for eight years in open, notorious public use by the prior inventor at his counting-house, accessible to those in his employ, and then, at the expiration of eight years, and still before even an application for plaintiff's patent had been made, had passed into the possession of others.

It is submitted that this is not such a use as leaves it in any respect 'a question whether the use made by Conner of the safe constructed by him had been such as would prevent another from taking out a patent.'

The patent law of 1836, § 6, gives its privileges to an inventor whose invention was 'not known or used by others before his discovery.'

It exacts an oath from an inventor to this effect.

This safe, if Conner's invention be prior, was both known and used before, and nowhere in the act can there be found any qualifying words upon such knowledge or use, or any reservation of circumstances under which prior knowledge and use will not, if proven, defeat a patent.

The following authorities are in point, premising that the language of the patent act of 1793, in relation to the novelty of the invention, is the same as that employed in the act of 1836, namely, 'not known or used before.'

'The plaintiff cannot object to the originalty or priority and use of another machine, alleged to have been similar to his own, on the ground that it had gone into disuse, or was not notoriously in use; since it is essential to his case to prove he was the original inventor of the machine for which he has a patent. Evans v. Hettick, 3 Wash. C. C., 408.

Under the sixth section of the patent law, if the thing secured by patent had been in use, or had been described in a public work anterior to the supposed discovery, the patent is void, whether the patentee had a knowledge of this previous use or not. Evans v. Eaton, 3 Wheat., 454.

If the original inventor of a machine abandons the use of it, and does not take out a patent for it, no other person can entitle himself to patent for it. Evans v. Eaton, 1 Pet. C. C., 323.

In an action for a violation of a patent granted by the United States for an alleged original invention, the plaintiff must satisfy the jury that he was the original inventor in relation to every part of the world.

Although no proof was made that the patentee knew that the discovery had been made prior to his, still he could not recover, if, in fact, he was not the original inventor. Dawson v. Follen, 2 Wash. C. C., 311; Reutgen v. Kanowrs, 1 Id., 168; Whitney v. Emmett, 1 Baldw., 303. Also, Curtis on Patents, § 40 n.

The same construction of the act of Congress is given by Judge Story, in Reed v. Cutter, 1 Story, 590.

After ruling that the applicant must be not only an original inventor, but the original inventor, he says: 'And it is of no consequence whether the invention is extensively known and used, or whether the knowledge and use thereof is limited to a few persons, or even to the first inventor himself, or is kept a secret by him.'

And again: 'The language of the patent act of 1836, p. 357, § 6, not known or used, &c., does not require that the invention should be known or used by more than one person, but merely indicates that the use should be by some other person than the patentee.'

And again: 'The decision in Dolland's case may be a correct exposition of the English statute of monopolies (21 James I.), but is not applicable to the patent law of the United States.'

4. But there is another view of the case from this point, which is entitled to consideration.

It is submitted that, measured by the seventh section of the act of 1839, the construction and use of the Conner safe had been such as necessarily and absolutely to defeat the plaintiff's patent, and that the learned judge erred in not thus instructing the jury, (5th, 6th, and 7th exceptions).

That section provides,--

'That every person or corporation who has, or shall have, purchased or constructed any newly invented machine, manufacture, or composition of matter, prior to the application by the inventor or discoverer for a patent, shall be held to possess the right to use, and vend to others to be used, the specific machine, manufacture, or composition of matter so made or purchased, without liability therefor to the inventor, or to any other person interested in such invention; and no patent shall be held to be invalid by reason of such purchase, sale, or use prior to the application for a patent as aforesaid, except on proof of abandonment of such invention to the public; or that such purchase, sale, or prior use has been for more than two years prior to such application for a patent.'

In this section the words 'newly invented machine, manufacture, or composition of matter' have been decided by this court to be synonymous with 'invention or thing patented.' McClurg v. Kingsland, 1 How., 202.

Now it is the distinct and uncontradicted fact, that in this case the invention or thing patented had been 'constructed,' and was in use by another, at least eight years before the application for a patent. And yet, by the final clause of the section just quoted, if there is proved such use, 'two years prior to the application for a patent,' such 'patent shall be held to be invalid.'

It is stated by one witness, that between the years 1829 and 1832, and by another, that in the year 1831 or 1832, Conner made a safe constructed precisely as is the patented safe,-that it was used as the safe for his establishment,-was kept in his counting-room, and was known to the persons working in his foundery,-and so continued to be until 1838, when it passed from Conner's into other hands.

The plaintiff's application for a patent bears date April 11th, 1839.

It is submitted, therefore, that this patent cannot be sustained without flatly contravening the clear and express language of the seventh section of the act of 1839, just quoted.

This case is one in which a recovery by the plaintiff below cannot be sustained without imposing great hardships upon the defendants. The patent issued in 1843,-more than four years after application for it was made, and more than thirteen years after the applicant had perfected his invention. The very same invention had been made by a stranger at least thirteen, and perhaps fourteen, years before the date of the patent, and had been publicly used by him, with the knowledge of many, for eight years before plaintiff's application for a patent, and had then passed from him into the hands of others.

Such a use for two years, by the seventh section of the act of 1839, defeats a patent.

Added to this, it was in evidence that the plaintiff no longer possessed the right for the invasion of which this action was brought, and the recovery, if had, must be for an injury done, not to him, but to another,-in whom the very same cause of action will continue to exist.

Mr. Staples, contra.

1. The first question is, whether the conveyance from Fitzgerald to Enos Wilder, before the issuing of the patent, conveyed the patent itself when issued. The error on the other side is in considering an invention as a sort of chose in action. An invention, however, is as much property as a horse or a house, and when patented becomes the exclusive property of the patentee. It is consequently assignable as well before as after the granting of letters patent. The very terms employed in the 11th and 14th sections of the act of 1836 (5 Stat. at L., 121, 122), and which are relied on by the other side as showing that the patent only was assignable, show, on the contrary, that reference was not had to any thing in the nature of a chose in action, but that the interest of the inventor in the thing invented was the subject of assignment. Herbert v. Adams, 4 Mason, 15, is to the effect that a conveyance of an invention operates as a conveyance of the patent, whether dated before or after the patent. So also Curtis on Patents, §§ 189, 260.

2. The next assignment of error is, that the court did not decide that the agreement of the plaintiff with Silas C. Herring did not divest the former of all interest in the patent, so that he could not thereafter maintain an action thereon. We say not; because Wilder did not give up all his interest, he reserving one cent a pound on all safes made under the patent in the city and state of New York; because he reserved the right to manufacture in the city of New York on the terms named; because the agreement was a mere license; and because it is obvious, from the face of the agreement itself, that Wilder was to bring suits to sustain the patent. Brooks v. Byam, 2 Story, 541. The latter part of the agreement with Wilder was equivalent to this, viz.: Wilder sells to Herring the right to manufacture and vend safes within the city, county, and state of New York. But he reserves to himself the right to make in the city safes to be sold out of the city. He also reserves the right to make safes to be sold within the city, upon payment to Herring of one cent per pound. This shows that Wilder had not sold his entire right, and could therefore maintain this action.

3. Act to the Connor safe. The object of the law was to protect genius and at the same time to invite something useful to the country. A prior experiment, locked up in a man's own bosom, not divulged to the public, not rendered useful to the public, is surely not such an invention as will exclude a ben a fide inventor of the same thing from the benefits of the patent laws, if he has used diligence in embodying his invention and reducing it to practice. Such, on the contrary, was the very person intended to be benefited. It is not correct to say that an inventor must have been the first man who has ever thought of the subject, or that mere speculations are within the meaning of the act; but he is an inventor under the law who has first put the invention into such a shape as to be useful to the public.

Mr. Webster, on the same side.

It is agreed that, under the previously existing laws, the invention would have been assignable. But it is supposed that the act of 1836, which repeals all former laws, only makes the patent assignable, but says nothing of the invention. Now two things are to be considered. 1st. In a country where the principle of the patent laws is recognized, where an invention is regarded as property which may be set apart for a person's own exclusive use, is it not assignable, independent of any statute enactment? If not, why is it not? What is the reason that an invention which is recognized as property shall not be transferable, like other property, there being nothing in the statute to prohibit it? 2d. Does the language of the eleventh section of the act of 1836 restrict assignability to the patent? I think not. Every other portion of the act has a different aspect.

Wilder has clearly the right to maintain an action, for the reason that he has not parted with all his interest. He still has an interest to the value of one cent per pound. But the agreement itself was a mere license. It uses the term license, and does not run to the heirs and assignees.

With regard to the Conner safe, it could not be considered such a prior invention as would take away the right of Fitzgerald to a patent. There are dicta in Judge Story's decision in the case of Reed v. Cutter, which, if not limited, would be of dangerous tendency. Now the instruction objected to supposes an invention to be made, but kept within the inventor's own bosom. The question is, whether an original inventor (that is, one who did not derive his knowledge from another), who has put his invention into practice, shall be deprived of his patent by such a mere thought, gendered in another's brain, and to which he 'gives no tongue.' The object of the patent law, and of the Constitution under which the law was passed, was the public benefit. If this be so, how does a man bring himself within its provisions who locks his secret in his own breast? And why is he less a benefactor to the public who invents a machine which had been before invented and afterwards forgotten, than he who invents something never before known?

Mr. Cuyler, in reply and conclusion.

It is said that the invention would be assingable, independent of the patent law. It is submitted that this is not correct. Except by statute, the inventor has no right of property in his invention. The statute was intended to confer that very right. Now the act of 1793 gave the right of assigning an invention, and yet, with this before them, Congress, in the act of 1836, make only the patent assignable. If, then, the patent is made assignable only by the law, how can it be said that the invention does not stand in need of such a provision?

It is said that the plaintiff has reserved one cent per pound, and can therefore maintain this action. It will be seen, however, that this part of the agreement is a penalty. If he, Wilder, makes safes in New York to be sold in New York, he shall pay, &c. A license can maintain an action.

The facts as to the Conner safe should have been left to the jury. This was not a case where the invention had been lost or forgotten; but within a few years a man makes for his own use, and actually uses in his own counting-house, a safe constructed upon the same principles as that which is the foundation of this suit. The law requires that a patented article should not have been made or used before.

Mr. Chief Justice TANEY delivered the opinion of the court.

Three objections have been taken to the instructions given by the Circuit Court at the trial, and neither of them is, perhaps, entirely free from difficulty.

The first question arises upon the assignment of Fitzgerald to Enos Wilder. The assignment was made and recorded in the Patent-Office before the patent issued. It afterwards issued to Eitzgerald. And the plaintiffs in error insist that this assignment did not convey to Wilder the legal right to the monopoly subsequently conferred by the patent, and that the plaintiff who claims under him cannot therefore maintain this action.

The inventor of a new and useful improvement certainly has no exclusive right to it, until he obtains a patent. This right is created by the patent, and no suit can be maintained by the inventor against any one for using it before the patent is issued. But the discoverer of a new and useful improvement is vested by law with an inchoate right to its exclusive use, which he may perfect and make absolute by proceeding in the manner which the law requires. Fitzgerald possessed this inchoate right at the time of the assignment. The discovery had been made, and the specification prepared to obtain a patent. And it appears by the language of the assignment, that it was intended to operate upon the perfect legal title which Fitzgerald then had a lawful right to obtain, as well as upon the imperfect and inchoate interest which he actually possessed. The assignment requests that the patent may issue to the assignee. And there would seem to be no sound reason for defeating the intention of the parties by restraining the assignment to the latter interest, and compelling them to execute another transfer, unless the act of Congress makes it necessary. The court think it does not. The act of 1836 declares that every patent shall be assignable in law, and that the assignment must be in writing, and recorded within the time specified. But the thing to be assigned is not the mere parchment on which the grant is written. It is the monopoly which the grant confers: the right of property which it creates. And when the party has acquired an inchoate right to it, and the power to make that right perfect and absolute at his pleasure, the assignment of his whole interest, whether executed before or after the patent issued, is equally within the provisions of the act of Congress.

And we are the less disposed to give it a different construction, because no purpose of justice would be answered by it, and the one we now give was the received construction of the act of 1793, in several of the circuits; and there is no material difference in this respect between the two acts. As long ago as 1825, it was held by Mr. Justice Story, that in a case of this kind an action could not be maintained in the name of the patentee, but must be brought by the assignee. 4 Mason, 15. We understand the same rule has prevailed in other circuits; and if it were now changed, it might produce much injustice to assignees who have relied on such assignments, and defeat pending suits brought upon the faith of long established judicial practice and judicial decision. Fitzgerald sets up no claim against the assignment, and to require another to complete the transfer would be mere form. We do not think the act of Congress requires it; but that, when the patent issued to him, the legal right to the monopoly and property it created was, by operation of the assignment then on record, vested in Enos Wilder.

The next question is upon the agreement between the defendant in error and Herring. Is this instrument an assignment to Herring for the state or city of New York, upon which he might have sued in his own name? If it is, then this action cannot be maintained by the defendant in error.

Now the monopoly granted to the patentee is for one entire thing; it is the exclusive right of making, using, and vending to others to be used, the improvement he has invented, and for which the patent is granted. The monopoly did not exist at common law, and the rights, therefore, which may be exercised under it cannot be regulated by the rules of the common law. It is created by the act of Congress; and no rights can be acquired in it unless authorized by statute, and in the manner the statute prescribes.

By the eleventh section of the act of 1836, the patentee may assign his whole interest, or an undivided part of it. But if he assigns a part under this section, it must be an undivided portion of his entire interest under the patent, placing the assignee upon an equal footing with himself for the part assigned. Upon such an assignment, the patentee and his assignees become joint owners of the whole interest secured by the patent, according to the respective proportions which the assignment creates.

By the fourteenth section, the patentee may assign his exclusive right within and throughout a specified part of the United States, and upon such an assignment the assignee may sue in his own name for an infringement of his rights. But in order to enable him to sue, the assignment must undoubtedly convey to him the entire and unqualified monopoly which the patentee held in the territory specified,-excluding the patentee himself, as well as others. And any assignment short of this is a mere license. For it was obviously not the intention of the legislature to permit several monopolies to be made out of one, and divided among different persons within the same limits. Such a division would inevitably lead to fraudulent impositions upon persons who desired to purchase the use of the improvement, and would subject a party who, under a mistake as to his rights, used the invention without authority, to be harassed by a multiplicity of suits instead of one, and to successive recoveries of damages by different persons holding different portions of the patent right in the same place. Unquestionably, a contract for the purchase of any portion of the patent right may be good as between the parties as a license, and enforced as such in the courts of justice. But the legal right in the monopoly remains in the patentee, and he alone can maintain an action against a third party who commits an infringement upon it. This is the view taken of the subject in the case of Blanchard v. Eldridge, J. W. Wallace, 337, and we think it the true one.

Applying these principles to the case before us, the action was properly brought by the plaintiff below, and could not have been maintained by Herring.

The agreement is singularly confused and complicated. It purports to grant to Herring the exclusive right to make and vend the Salamander safe in the city, county, and state of New York; and Herring agrees to pay to the defendant in error a cent a pound for every pound the safes might weigh, to be paid monthly. But at the same time it reserves to Wilder the right to set up a manufactory or works for making these safes in the state of New York, provided it is not within fifty miles of the city, and to sell them in the state of New York, paying to Herring a cent a pound on each safe so sold within the state.

It is evident that this agreement is not an assignment of an undivided interest in the whole patent, nor the assignment of an exclusive right to the entire monopoly in the state or city of New York. It is therefore to be regarded as a license only, and under the act of Congress does not enable Herring to maintain an action for an infringement of the patent right. The defendant in error continues the legal owner of the monopoly created by the patent.

The remaining question is upon the validity of the patent an which the suit was brought.

It appears that James Conner, who carried on the business of a stereotype founder in the city of New York, made a safe for his own use between the years 1829 and 1832, for the protection of his papers against fire; and continued to use it until 1838, when it passed into other hands. It was kept in his counting-room and known to the persons engaged in the foundery; and after it passed out of his hands, he used others of a different construction.

It does not appear what became of this safe afterwards. And there is nothing in the testimony from which it can be inferred that its mode of construction was known to the person into whose possession it fell, or that any value was attached to it as a place of security for papers against fire; or that it was ever used for that purpose.

Upon these facts the court instructed the jury, 'that if Connor had not made his discovery public, but had used it simply for his own private purpose, and it had been finally forgotten or abandoned, such a discovery and use would be no obstacle to the taking out of a patent by Fitzgerald or those claiming under him, if he be an original, though not the first, inventor or discoverer.'

The instruction assumes that the jury might find from the evidence that Conner's safe was substantially the same with that of Fitzgerald, and also prior in time. And if the fact was so, the question then was whether the patentee was 'the original and first inventor or discoverer,' within the meaning of the act of Congress.

The act of 1836, ch. 357, § 6, authorizes a patent where the party has discovered or invented a new and useful improvement, 'not known or used by others before his discovery or invention.' And the 15th section provides that, if it appears on the trial of an action brought for the infringement of a patent that the patentee 'was not the original and first inventor or discoverer of the thing patented,' the verdict shall be for the defendant.

Upon a literal construction of these particular words, the patentee in this case certainly was not the original and first inventor or discoverer, if the Conner safe was the same with his, and preceded his discovery.

But we do not think that this construction would carry into effect the intention of the legislature. It is not by detached words and phrases that a statute ought to be expounded. The whole act must be taken together, and a fair interpretation given to it, neither extending nor restricting it beyond the legitimate import of its language, and its obvious policy and object. And in the 15th section, after making the provision above mentioned, there is a further provision, that, if it shall appear that the patentee at the time of his application for the patent believed himself to be the first inventor, the patent shall not be void on account of the invention or discovery having been known or used in any foreign country, it not appearing that it had been before patented or described in any printed publication.

In the case thus provided for, the party who invents is not strictly speaking the first and original inventor. The law assumes that the improvement may have been known and used before his discovery. Yet his patent is valid if he discovered it by the efforts of his own genius, and believed himself to be the original inventor. The clause in question qualifies the words before used, and shows that by knowledge and use the legislature meant knowledge and use existing in a manner accessible to the public. If the foreign invention had been printed or patented, it was already given to the world and open to the people of this country, as well as of others, upon reasonable inquiry. They would therefore derive no advantage from the invention here. It would confer no benefit upon the community, and the inventor therefore is not considered to be entitled to the reward. But if the foreign discovery is not patented, nor described in any printed publication, it might be known and used in remote places for ages, and the people of this country be unable to profit by it. The means of obtaining knowledge would not be within their reach; and, as far as their interest is concerned, it would be the same thing as if the improvement had never been discovered. It is the inventor here that brings is to them, and places it in their possession. And as he does this by the effort of his own genius, the law regards him as the first and original inventor, and protects his patent, although the improvement had in fact been invented before, and used by others.

So, too, as to the lost arts. It is well known that centuries ago discoveries were made in certain arts the fruits of which have come down to us, but the means by which the work was accomplished are at this day unknown. The knowledge has been lost for ages. Yet it would hardly be doubted, if any one now discovered an art thus lost, and it was a useful improvement, that, upon a fair construction of the act of Congress, he would be entitled to a patent. Yet he would not literally be the first and original inventor. But he would be the first to confer on the public the benefit of the invention. He would discover what is unknown, and communicate knowledge which the public had not the means of obtaining without his invention.

Upon the same principle and upon the same rule of construction, we think that Fitzgerald must be regarded as the first and original inventor of the safe in question. The case as to this point admits, that, although Conner's safe had been kept and used for years, yet no test had been applied to it, and its capacity for resisting heat was not known; there was no evidence to show that any particular value was attached to it after it passed from his possession, or that it was ever afterwards used as a place of security for papers; and it appeared that he himself did not attempt to make another like the one he is supposed to have invented, but used a different one. And upon this state of the evidence the court put it to the jury to say, whether this safe had been finally forgotten or abandoned before Fitzgerald's invention, and whether he was the original inventor of the safe for which he obtained the patent; directing them, if they found these two facts, that their verdict must be for the plaintiff. We think there is no error in this instruction. For if the Conner safe had passed away from the memory of Conner himself, and of those who had seen it, and the safe itself had disappeared, the knowledge of the improvement was as completely lost as if it had never been discovered. The public could derive no benefit from it until it was discovered by another inventor. And if Fitzgerald made his discovery by his own efforts, without any knowledge of Conner's, he invented an improvement that was then new, and at that time unknown; and it was not the less new and unknown because Conner's safe was recalled to his memory by the success of Fitzgerald's.

We do not understand the Circuit Court to have said that the omission of Conner to try the value of his safe by proper tests would deprive it of its priority; nor his omission to bring it into public use. He might have omitted both, and also abandoned its use, and been ignorant of the extent of its value; yet, if it was the same with Fitzgerald's, the latter would not upon such grounds be entitled to a patent, provided Conner's safe and its mode of construction were still in the memory of Conner before they were recalled by Fitzgerald's patent. [5]

The circumstances above mentioned, referred to in the opinion of the Circuit Court, appeared to have been introduced as evidence tending to prove that the Conner safe might have been finally forgotten, and upon which this hypothetical instruction was given. Whether this evidence was sufficient for that purpose or not, was a question for the jury, and the court left it to them. And if the jury found the fact to be so, and that Fitzgerald again discovered it, we regard him as standing upon the same ground with the discoverer of a lost art, or an unpatented and unpublished foreign invention, and like him entitled to a patent. For there was no existing and living knowledge of this improvement, or of its former use, at the time he made the discovery. And whatever benefit any individual may derive from it in the safety of his papers, he owes entirely to the genius and exertions of Fitzgerald.

Upon the whole, therefore, we think there is no error in the opinion of the Circuit Court, and the judgment is therefore affirmed.



This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the Southern District of New York, and was argued by counsel. On consideration whereof, it is now here ordered and adjudged by this court, that the judgment of the said Circuit Court in this cause be, and the same is hereby, affirmed, with costs and damages at the rate of six per centum per annum.

Notes[edit]

^5  QUOTED. Coffin v. Ogden, 18 Wall., 125.

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