Chase v. Walker

5 F. Cas. 524, 3 Fish. Pat. Cas. 120

• Court: U.S. Circuit Court for the District of Eastern Pennsylvania
• Decided: November 15, 1866
• Status: Published

Opinion

CADWALADER, District Judge.

It is Judge Grier’s opinion, in which I concur, that this is a veiy dea'.- case for the defendants. As the proceeding is in equity, it is immaterial whether the instrument of January 20, 1849, vested a legal or an equitable interest in the local privilege which it was intended to transfer.

The question is, whether this instrument sufficiently indicates an intention to transfer an interest w'hich might endure beyond the original term of fourteen years. If sucli intention is in anywise apparent, the effect must be to transfer the local interest for the term of the extension of seven years', afterward obtained. The question may be resolved by considering two clauses of the instrument. They will be examined separately, and afterward together.

In the first, the patentee grants the exclusive local privilege to the utmost and fullest extent, as to duration, that he is or may be entitled to under the said letters patent If the words “under the said letters patent” had been omitted, the effect of this clause could scarcely have been questionable. Independently of the contingency of an extension, the term could be neither less nor greater than the original fourteen year’s. Therefore, independently of this contingency, there could be no such comparative duration as to satisfy the words “utmost and fullest extent.” The applicability of this remark is not excluded by the addition of the words “under said letters patent.” In the reports of cases which have been cited in the argument, the original patent is, after an extension, considered as having been, from the first, for certain purposes, a patent for the extended term. '

What is in one part of the act of congress [5 Stat. 117] called an extension is, indeed, in another part of the act called a renewal of the patent. ■ But the practice of the patent office, prescribed expressly by the act, is not to issue a new patent, but merely to certify the extension upon the original patent.

In the second clause, the patentee covenants to assign any further patents or patent rights, which he may. at any time afterward, procure for any improvement or improvements upon the original invention, and also any and all renewals thereof in and for the said state. Independently of the arguments upon the context of this clause, and upon the different meanings which may be attributable to the word renewals, the substance of the provision for the transfer of subsequent patents for improvements must be considered. Any such , subsequent patent would be for a term of fourteen years, which, whether it should be extended or not, must necessarily continue after the expiration of the term of the former patent for the original invention. Now the patentee can not be understood as having intended either to deprive himself of the right of applying for an extension of the original patent, or to reserve this right so as to frustrate the subsequent local use of the patented improvements under the transfer in question. But the subsequently patented improvements could not be used without the use of the original invention; and the parties can not have intended that, as to such improvements, he should be able to restrain the use of the original invention after the expiration of tile original term. There was thus one purpose, at least, for which the local privilege must have extended beyond the original term.

Lastly, the two clauses will be considered together. Here the second, as a glossary to define the words of the first, will remove any doubt which might otherwise remain, as to their import. The words of the first clause “utmost and fullest extent as to duration,” are shown by the second clause to have extended for a specific purpose beyond the original term of fourteen years. If so, as the words of the first clause are not specific, but general, their intended application, as to the local privilege transferred, must have been the same for general purposes, including the extension in question. Notwithstanding the ■decree under which the bill was taken pro ■confesso, the cause was heard, by consent, as upon bill and answer. Moreover, the ■documents under which the parties respectively deduce title,- were, by consent, read in evidence at the hearing.

The decree must be opened and set aside, and the bill dismissed, with costs.