Gayler v. Wilder

51 U.S. 477, 13 L. Ed. 504, 10 How. 477, 1850 U.S. LEXIS 1477

• Court: Supreme Court of the United States
• Decided: January 18, 1851
• Status: Published

Opinions

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 Fitzgerald. 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, add 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^ommon 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 th,e 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 o, 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 casé 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 on 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 183S, when it passed into other hands. It was kept in his counting-room and known to the-persons engaged in the fouridery; and after it passed out of his hands, he used others of a different construction.

It docs 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 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.”

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 timé. 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 riot 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 thé 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 it 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 regardéd 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 hé 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.

The circumstances above mentioned,-referred to in the opinion of the Circuit Court, appear 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 gs 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 thé 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.