CURTIS, Circuit Justice.
Upon the preliminary questions raised in this case, I feel no difficulty. The principal of these is, that, since the letters-patent were extended, there has been no trial of the right, and no such length of possession as lays the foundation for a presumption of its validity. It appears that during the original term of fourteen years, it was decided by the supreme court after full examination of the law and facts, that Morse was the original and first inventor of all that was claimed in his reissued letters-patent, save the subject-matter of the eighth claim, which is of no importance here, and that those letters-patent were valid. The act of congress of July 4, 1830, § 18 (5 Stat. 124), after providing for the extension of letters-patent and the making and recording of the necessary certificates thereof, declares: “And thereupon the said patent shall have the same effect in law, as though it had been originally granted' for the term of twenty-one years.” It is manifest therefore that the exclusive right now claimed is the identical, exclusive right adjudicated on, and held valid by the supreme court, and that the court is commanded in express terms, to consider it as if it had been originally granted for a period not yet expired, provided it was duly extended, according to the requirements of the act of congress. There is a suggestion of fraud in one of the answers filed in the ease. But no evidence, in support of the suggestion has been produced, nor has it been relied on in argument. I cannot presume that any fraud existed. Of all matters necessary to a valid extension, there is not only a strong presumption, arising from the act of extension, but, in respect to the entire merits of the patentee, and the existence of the legal grounds for an extension, the law makes the commissioner the judge, and in the absence of fraud his adjudication is conclusive. I entertain no doubt therefore, that there is such a prima facie title to the exclusive right made out, as calls on the court to protect it by injunction, provided the defendants have not shown, that they have acquired some title to the use they make of Morse's invention.
It was urged by the defendants’ counsel, that as this is an application for a preliminary injunction, it ought not to be granted, because the defendants have answered and denied the complainant’s title, and asserted title in themselves. But the practice of this circuit has been settled since the case of Poor v. Carleton [Case No. 11,272], A mere denial by an answer, of the equity of the bill, does not prevent the court from looking into the law and the facts of the case, when a special injunction is moved for, and granting or refusing it according to its discretion. And where the title to an injunction does not depend upon any controverted or doubtful facts, but upon the interpretation to be put by the court upon a written instrument, I [1102]*1102■consider it my duty to interpret it on such a motion and grant or refuse the injunction according to the result of that interpretation. There may be cases in which there is sp much doubt what the parties to an instrument intended to effect by it, that the court may think it proper to suspend its judgment until the surrounding circumstances can be more fully and safely examined on a final hearing. It is possible also, that where there axe grave doubts concerning the legal effect of an instrument, the court might decline to interfere by special injunction, even though, if compelled to decide, their decision must be in favor of the complainant. Probably the circumstances of the case, and the degree of mischief which would be suffered by refusing the injunction, compared with the inconvenience and loss occasioned by granting it, would control the action of the court in the case supposed. But in general, I apprehend that if the title to a temporary injunction depends on the construction of a deed, the court will construe it and act accordingly, whatever view of that question the answer may have presented. I have therefore looked into the documents on which the title of the respondents depends, and will now state my opinion thereon.
The defendants claim under Francis O. J. Smith. His title was originally granted to him by Morse, by a deed dated on the -day of March, 188S. The subject-matter of this grant is thus described in the deed. (Here the judge read the clause beginning, ■“fourth part of my said invention,” &e., to the end of paragraph.) At the date of the deed no letters-patent had been obtained. The deed could not convey, and does not purport to convey an interest in any particular letters-patent, or in any exclusive right secured by any particular letters-patent. It purports to convey “one undivided fourth part of the invention.” As is said by the supreme court in Gayler v. Wilder, 10 How. [51 U. S.] 493, “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.” It was one quarter part of this inchoate right, which the deed undertook to convey. But the inventor has not only an inchoate right to obtain letters-patent securing to him the exclusive right to his invention for the term of fourteen years, but also a further inchoate right to have the term extended, provided he shall fail, without fault, to obtain a reasonable remuneration for the time, ingenuity, and expense bestowed upon the same, and the introduction thereof into public use. Though it has not been expressly determined that this last right is the subject of a contract of sale, I conceive there can be no reasonable doubt that it is so. The reasoning of the court in Wilson v. Rousseau. 4 How. [45 U. S.] 646, assumes and indeed' asserts that it is so. And there is nothing in the nature or incidents of such a right, to distinguish it as a subject of sale, from the inchoate right to obtain the original patent. Each appertains to the inventor by reason of his invention. Each is incomplete, and its completion depends upon the compliance by the inventor with conditions, and the performance by pub-lio officers of certain acts, prescribed by law. It is true, the title of an inventor to an extension is still further qualified by a further condition, of his failure to obtain remuneration from the enjoyment of the exclusive right, for the first term of fourteen years. But though this is an additional condition, which may render parties less willing to contract, its existence does not change the nature of the right, and it no more prevents it from being the subject of a contract of sale, than any other condition which is attached to it.
Considering, then, that the title of an inventor to obtain an extension may be the subject of a contract of sale, the inquiry in this case is, whether part of it was intended to be sold. I am inclined to the opinion that a sale of “the invention,” before letters-patent are obtained, does not necessarily carry with it the exclusive right for the extended term. Because this right is not a mere incident of the invention. Its existence is made to depend, not only on matter which is subsequezit to the invention, but exclusively personal to the inventor himself; and only he or his personal representatives can obtain it. This may distinguish the case from Carnan v. Bowles, 2 Brown, Ch. 80. See, also, Pierpont v. Fowle [Case No. 11,152].
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CURTIS, Circuit Justice.
Upon the preliminary questions raised in this case, I feel no difficulty. The principal of these is, that, since the letters-patent were extended, there has been no trial of the right, and no such length of possession as lays the foundation for a presumption of its validity. It appears that during the original term of fourteen years, it was decided by the supreme court after full examination of the law and facts, that Morse was the original and first inventor of all that was claimed in his reissued letters-patent, save the subject-matter of the eighth claim, which is of no importance here, and that those letters-patent were valid. The act of congress of July 4, 1830, § 18 (5 Stat. 124), after providing for the extension of letters-patent and the making and recording of the necessary certificates thereof, declares: “And thereupon the said patent shall have the same effect in law, as though it had been originally granted' for the term of twenty-one years.” It is manifest therefore that the exclusive right now claimed is the identical, exclusive right adjudicated on, and held valid by the supreme court, and that the court is commanded in express terms, to consider it as if it had been originally granted for a period not yet expired, provided it was duly extended, according to the requirements of the act of congress. There is a suggestion of fraud in one of the answers filed in the ease. But no evidence, in support of the suggestion has been produced, nor has it been relied on in argument. I cannot presume that any fraud existed. Of all matters necessary to a valid extension, there is not only a strong presumption, arising from the act of extension, but, in respect to the entire merits of the patentee, and the existence of the legal grounds for an extension, the law makes the commissioner the judge, and in the absence of fraud his adjudication is conclusive. I entertain no doubt therefore, that there is such a prima facie title to the exclusive right made out, as calls on the court to protect it by injunction, provided the defendants have not shown, that they have acquired some title to the use they make of Morse's invention.
It was urged by the defendants’ counsel, that as this is an application for a preliminary injunction, it ought not to be granted, because the defendants have answered and denied the complainant’s title, and asserted title in themselves. But the practice of this circuit has been settled since the case of Poor v. Carleton [Case No. 11,272], A mere denial by an answer, of the equity of the bill, does not prevent the court from looking into the law and the facts of the case, when a special injunction is moved for, and granting or refusing it according to its discretion. And where the title to an injunction does not depend upon any controverted or doubtful facts, but upon the interpretation to be put by the court upon a written instrument, I [1102]*1102■consider it my duty to interpret it on such a motion and grant or refuse the injunction according to the result of that interpretation. There may be cases in which there is sp much doubt what the parties to an instrument intended to effect by it, that the court may think it proper to suspend its judgment until the surrounding circumstances can be more fully and safely examined on a final hearing. It is possible also, that where there axe grave doubts concerning the legal effect of an instrument, the court might decline to interfere by special injunction, even though, if compelled to decide, their decision must be in favor of the complainant. Probably the circumstances of the case, and the degree of mischief which would be suffered by refusing the injunction, compared with the inconvenience and loss occasioned by granting it, would control the action of the court in the case supposed. But in general, I apprehend that if the title to a temporary injunction depends on the construction of a deed, the court will construe it and act accordingly, whatever view of that question the answer may have presented. I have therefore looked into the documents on which the title of the respondents depends, and will now state my opinion thereon.
The defendants claim under Francis O. J. Smith. His title was originally granted to him by Morse, by a deed dated on the -day of March, 188S. The subject-matter of this grant is thus described in the deed. (Here the judge read the clause beginning, ■“fourth part of my said invention,” &e., to the end of paragraph.) At the date of the deed no letters-patent had been obtained. The deed could not convey, and does not purport to convey an interest in any particular letters-patent, or in any exclusive right secured by any particular letters-patent. It purports to convey “one undivided fourth part of the invention.” As is said by the supreme court in Gayler v. Wilder, 10 How. [51 U. S.] 493, “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.” It was one quarter part of this inchoate right, which the deed undertook to convey. But the inventor has not only an inchoate right to obtain letters-patent securing to him the exclusive right to his invention for the term of fourteen years, but also a further inchoate right to have the term extended, provided he shall fail, without fault, to obtain a reasonable remuneration for the time, ingenuity, and expense bestowed upon the same, and the introduction thereof into public use. Though it has not been expressly determined that this last right is the subject of a contract of sale, I conceive there can be no reasonable doubt that it is so. The reasoning of the court in Wilson v. Rousseau. 4 How. [45 U. S.] 646, assumes and indeed' asserts that it is so. And there is nothing in the nature or incidents of such a right, to distinguish it as a subject of sale, from the inchoate right to obtain the original patent. Each appertains to the inventor by reason of his invention. Each is incomplete, and its completion depends upon the compliance by the inventor with conditions, and the performance by pub-lio officers of certain acts, prescribed by law. It is true, the title of an inventor to an extension is still further qualified by a further condition, of his failure to obtain remuneration from the enjoyment of the exclusive right, for the first term of fourteen years. But though this is an additional condition, which may render parties less willing to contract, its existence does not change the nature of the right, and it no more prevents it from being the subject of a contract of sale, than any other condition which is attached to it.
Considering, then, that the title of an inventor to obtain an extension may be the subject of a contract of sale, the inquiry in this case is, whether part of it was intended to be sold. I am inclined to the opinion that a sale of “the invention,” before letters-patent are obtained, does not necessarily carry with it the exclusive right for the extended term. Because this right is not a mere incident of the invention. Its existence is made to depend, not only on matter which is subsequezit to the invention, but exclusively personal to the inventor himself; and only he or his personal representatives can obtain it. This may distinguish the case from Carnan v. Bowles, 2 Brown, Ch. 80. See, also, Pierpont v. Fowle [Case No. 11,152]. But at the same time, it must be admitted, that where an inventor has in terms, sold to another person, a part of his invention, he has done that which is quite consistent with an intent to have that other pei'son participate in all the rights which he, as inventor, can acquire by law; and that where the invention is the subject sold, it would be natural to expect to find in the instrument of sale, something showing an intention, that the purchaser should be interested not merely in the original letters-patent, but in any extension thereof securing the exclusive right to the same invention which was the subject of the sale. Taking the whole of this deed together, 1 think it quite clear such was the intention of its parties. It superadds to the words “my invention,” the words, “rights and property that I may have from any letters-patent for the same.” These terms are broad enough to include the extended letters-patent now in question. Passing over some intermediate clauses which are not decisive, though they tend to show that a community of the entire interest was contemplated, we come to the covenant of the grantor, “to account, from the date hereof, to the said Smith, in the proportions before named, for all the proceeds of sales of rights to use said invention in any place or country, that may accrue to me at [1103]*1103any time.” It can hardly be doubted that .the aceountab’lity raised by tbis covenant was intended to be no more than co-extensive with the grant. It was manifestly inserted by reason of, and more perfectly to secure the benefit of the title conveyed; and so far .as there is room for doubt upon the language •of the granting part of the deed, this covenant may be resorted to, for the removal of that doubt. Looking at the deed from this point of view, I find the intention of the parties was, to have the grantee interested in the rights springing from this invention, not merely during the limited period of fourteen years from the date of letters-patent, but “at any time.” This view of the rights of the parties is confirmed by the indenture, which bears the same date, and which had for its object, to settle the relative duties and powers of those who had become what it terms, “joint owners of the invention.”
[NOTE. On the final hearing the bill was dismissed. Case No. 2.910.
[For other eases involving this patent, see note to Smith v. Ely, Case No. 13,043.]
Without examining the different clauses of this deed in detail, it may be said that throughout its provisions, no expectation is shown, that they will cease to be in force or applicable at the expiration of any particular letters-patent; or that any thing less than what is denominated in the sixth article, “the continuance of said invention as a patent right,” was considered to be the subject-matter upon which they were contracting. That it was the invention, and all rights to use it, which might at any time be acquired, which the parties had in view, seems to me clear, upon the whole instrument. Nor ■do I understand that Professor Morse has, at any time, or does now, take a different view of this matter. His letter of the 15th July, 1854, written soon after the extension, though it denies Mr. Smith’s legal title, and is worded with a caution, quite consistent with tire utmost fairness of intention on his part, certainly does not controvert the equitable title of Mr. Smith to participate in the proceeds of sales of rights under the extended patent. But I am of opinion that this cannot be conceded, without admitting at the same time that Mr. Smith became the owner of one undivided fourth part of the inchoate exclusive right, during the extended term. There was but one sale made by the deed of March, 183S. And if one undivided fourth part of the inchoate right to be secured under any and all letters-patent, was the subject of that sale, as I think it was, Mr. Smith owns the same interest under the patent after it was extended as he owned before it was extended. I do not think what he thus acquired, was merely a right to an account of the poeeeds of sales. It is not necessary in this case to determine, whether the interest of Mr. Smith became a legal title to one undivided fourth part of the original letters-patent as soon as they were issued; nor whether he was one of the assignees or grantees provided for in the 18th section of the patent act of 1836. Gayler v. Wilder, 10 How, [51 U. S.] 403. That he was an equitable owner, and entitled to call for a conveyance of the legal title to whatever was intended to be secured to him, seems very clear. For the inventor not only bargains, sells, and conveys one undivided fourth part of all rights which he may acquire from any letters-patent. but he expressly covenants, to execute deeds of conveyance of such undivided part, as soon as may be after letters-patent shall have issued. If this, by operation of law, did not give Mr. Smith a legal title, a jus in re, it clearly conferred on him a jus ad rem, an equitable right to the thing itself, and was not a mere executory contract to account for proceeds. Under the original letters-patent, the indentures of March, 183S, and June 22, 1847, show that all parties considered and treated him as a joint owner of these letters-patent. and entitled to make sales of rights secured thereby. Whatever rights he acquired by force of the deed of March, 1S3S, under the original, I am of opinion- he had by force of the same deed, under the extended letters.
As has already been said, it is not material in this case whether his title was legal or equitable, for a court of equity, upon a bill by the legal owner of a patent right, cannot enjoin the equitable owner from using the thing patented. It considers the equitable title the true title. This case, therefore, must stand as if Smith had that legal title which Morse is under covenant to convey to him. And in that case it could not be doubted that the suit must fail. One tenant in common has as good right to use, and to license third persons to use the thing patented, as the other tenant in common has. Neither can come into a court of equity and assert a superior equity, unless it has been created by some contract modifying the rights which belong to them, as tenants in common. No such modification appears here, and the motion for an injunction must be denied.