Nash v. Lull

102 Mass. 60

• Court: Massachusetts Supreme Judicial Court
• Decided: September 15, 1869
• Status: Published

Opinion

Gray, J.

Letters patent of the United States can be lawfully granted only for new and useful inventions; and are but primd facie evidence of the novelty and utility of the invention described. U. S. St. 1837, c. 45. Corning v. Burden, 15 How. 270, 271. All that is required to make an invention useful, under the patent laws, is that it should be capable of being applied to some practical and beneficial purpose, and not be frivolous, or injurious to the well being or morals of society. If it is useful in this sense, it is patentable, and the degree of its utility or practical value does not affect the validity of the'patent; if it is not useful, a patent for it is void. Lowell v. Lewis, 1 Mason, 185, 186. Bedford v. Hunt, Ib. 303, 304. Kneass v. Schuylkil Bank, 4 Wash. C. C. 12. Langdon v. De Groot, 1 Paine, 203 Roberts v. Ward, 4 McLean, 565.

In a suit brought on a promissory note, the osly consideration for which is the assignment of an interest in or right under a patent, the question of consideration depends upon the validity of the patent; if. the patent is void, the note is of course without consideration; but if it is valid, the court will not inquire into the adequacy of the consideration. The issue in such a case is therefore the same as in a suit in the courts of the United States for the infringement of a patent, the validity of which is denied by the defendant; and so it has been repeatedly adjudged in this and other courts. Bliss v. Negus, 8 Mass. 49. Dickinson v. Hall, 14 Pick. 217. Bierce v. Stocking, 11 Gray, 174. Lester v. Palmer, 4 Allen, 145. Dunbar v. Marden, 13 N. H. 311. Cross v. Huntly, 13 Wend. 385. Geiger v. Cook, 3 W. & S. 266. McClure v. Jeffrey, 8 Ind. 79. Myers v. Turner, 17 Ill. 179. Jolliffe v. Collins, 21 Missouri, 343.

In the case of Clough v. Patrick, 37 Verm. 421, cited for the defendant, which seems at first sight to enlarge the issue in his favor, the defendant’s evidence tended to show that the patented mowing machine, which was the consideration of the note sued on, was utterly worthless, and could not be made to work as a mowing machine at all, by reason of a defect in the principle of its construction ; and the ruling that “ if the patent right was of no value from the worthlessness of the machine patented, in the respect which the defendant’s evidence tended to show, that would constitute a perfect defence as to the payee, notwithstanding the patent may have been a legal one,” was held to be correct, upon the ground that the expression “ notwithstanding the patent may have been a legal one ” meant no more than that the letters patent were authentic and not vacated. Whether that construction of the ruling was warranted, we need not consider.

It is proper to add that the further dictum in that case, like the corresponding decision (Appleton, C. J., dissenting) in Elmer v. Pennel, 40 Maine, 430, that the invalidity of a patent cannot be set up except in a suit brought in the courts of the United States against an infringer of the patent, is inconsistent with the principles above stated and the authorities already referred to. A direct suit for the infringement of a patent must indeed be brought in the courts of the United States, because the very acta of congress which create the right provide that all actions and cases, in law or equity, arising under those laws, shall be originaiiy cognizable in those courts. U. S. St. 1836, c. 357, § 17 5 U. S. Sts. at Large, 134. Gibson v. Woodworth, 8 Paige, 132. Dudley v. Mayhew, 3 Comst. 9. Parkhurst v. Kinsman, 2 Halst. Ch. 600. Kempton v. Bray, 99 Mass. 354. But such a provision does not deprive the state courts of the power or the duty, when the question arises collaterally, of deciding whether the patent which is, relied on is of any validity. Rich v. Hotchkiss, 16 Conn. 409. Sherman v. Champlain Transportation Co. 31 Verm. 162. Slemmer’s Appeal, 58 Penn. State, 155.

The instructions to the jury clearly and accurately stated the law applicable to the case, and fully met and covered the instructions requested. Exceptions overruled.

*

A similar decision was made in the following case, which was argued at September term 1869 for Hampden.

Abel B. Howe vs. Ebenezer S. Richards.

Contract to recover $300 which the defendant agreed to pay in consideration of the conveyance to him by the plaintiff of the right to use in Holyoke a machine for manufacturing bricks under letters patent of which the plaintiff was assignee.

At the trial in the superior court, before Putnam, J., the plaintiff introduced evidence tending to prove the agreement, and his tender of such a conveyance to the defendant; and the defendant introduced evidence tending to prove “ that the patented article was of no substantial, practical utility, and the right offered to be conveyed to the defendant was of no value,” and that a machine set up by the plaintiff in Springfield “ did not produce merchantable bricks ; ” but there was also evidence, in behalf of the plaintiff, that “ an improved machine, made under the same patent,” and set up in Hew York, “would produce perfect bricks.”

“ The defendant asked the judge to rule that the question in controversy was whether or not the rights offered to be conveyed to the defendant were of value; and that, although the full rights secured by letters patent might be. of value, if the right to use or other rights offered to be conveyed to the defendant were of no value, the plaintiff could not recover; and the judge did so rule, but with this limitation and qualification, that, if the invention as recorded by letters patent was capable of any beneficial or practical use under the specification or claim set out in the specifications and letters patent, then the patent would be of value, and, if the patent was of value, then the interest offered to be conveyed under this assignment would be of value.’’ The jury found for the plaintiff, and the defendant alleged exceptions.

M. P. Knowlton, (G. M. Stearns with him,) for the defendant.

N. A. Leonard, (G. Wells with him,) for the plaintiff.

Gray, J. The instructions asked for were rightly modified, and the instructs ms given were correct. If a patent is valid, an assignment of the patent, or a conveyance of any interest under it, is a good consideration for a promise by the grantee. The validity of a patent, in point of utility, does not depend upon_ fche question whether its use will be attended with pecuniary profit, but simply upon the question whether it can be applied to some practical or beneficial, and not merely frivolous or mischievous purpose. Bedford v. Hunt, 1 Mason, 303, 804. Nash v. Lull, ante, 60. Exceptions overruled.