Pitts v. Whitman

19 F. Cas. 767, 2 Story 609

Opinion

STORY, Circuit Justice.

There is no ground to support, the motion in arrest of judgment, which indeed ought properly to be heard after the motion for a new trial, which, if granted, might supersede the other motion. The short answer to be given to the motion in arrest of judgment is, that the profert of the letters-patent (of which the specification constitutes a part,) makes the letters-patent, when produced, a part of the declaration, and so gives all his certainty as to the invention and improvement patented, which is required by law. It would indeed be more formal to annex a copy of the letters-patent and specification to the declaration, and to refer thereto in the declaration. But the common practice is according to the declaration in the present case; and there seems to be no substantial objection to it.

The first objection, taken upon the motion for a new trial is, that the deed of assignment from John A. Pitts to the plaintiff, dated on the 17th of April, 183S, was not recorded in the patent office until the 19th of April, 1S41, after the present suit was commenced; whereas it ought to have been recorded within three months after the execution thereof. By the patent act of 1793 (e. 53, § 4) every assignment, when recorded in the office of the secretary of state, was good to pass the title of the inventor, both as to right and responsibility; but no time whatever was prescribed within which the assignment was required to be made. By the eleventh section of the act of 1S30 (chapter 3Ó7) it is provided, “that every patent shall be assignable in law, either as to the whole interest or any undivided part thereof, by any instrument in writing; which assignment, and also every grant and conveyance of an exclusive right under any patent to make and use, and to grant to others to make and use, the thing patented within and throughout any specified portion of the United States, shall be'recorded in the patent office within three months from the execution thereof.” Now, it is observable, that there are no words in this enactment, which declare, that the assignment, if not recorded, shall be utterly void; and the question, therefore, is, whether it is to be construed as indispensable to the validity of an assignment, that it should be recorded within the three months, as a sine qua non; or whether the statute is merely directory for the protection of purchasers. Upon the best reflection, which I have been able to bestow upon the subject, my opinion is, that the latter is the true interpretation and object of the provision. My reasons for this opinion are, the inconvenience. and difficulty, and mischiefs, which would arise upon any other construction. In the first place, it is difficult to say. why, as between the patentee and the assignee, the assignment ought not to be held good as a subsisting contract and conveyance, although it is never recorded by accident, or mistake, or design. Suppose the patentee has assigned his whole right to the assignee for a full and adequate consideration, and the assignment is not recorded within the three months, and the assignee should make and use the patented machine afterwards; could the pat-entee maintain a suit against the assignee l'or such making or use as a breach of the patent, as if he had never parted with his right? This would seem to be most inequitable and unjust; and yet if the assignment became a nullity and utterly void by the non-recording within the three months, it would seem to follow as a legitimate consequence, that such suit would be maintainable. So strong is the objection to such a conclusion, that the learned counsel for the defendant admitted at the argument, that as between the patentee and the assignee, the assignment would be good, notwithstanding the omission to record it. If so, then it would seem difficult to see why the assignment ought not to be held equally valid against a mere wrong-doer, piratically invading the patent right.

Let us take another case. Could the pat-entee maintain a suit against a mere wrongdoer, after the assignment was made, and he had thereby parted with all his interest, if the assignment was not duly recorded? Certainly it must be conceded, that he could not, if the assignment did not thereby become a mere nullity, but was valid as between himself and the .assignee; for then there could accrue no damage to the patentee, and no infringement of his rights under the patent. Then could the assignee, in such a case, maintain a suit for the infringement of his rights under the assignment? If he could not. then he would have rights without any remedy. Nay, as upon this supposition, neither the patentee nor the assignee could maintain any suit for an infringement of the patent, the patent right itself would be utterly extinguished, in point of law. for all transferable purposes. Again; could the assignee, in such a case, maintain a suit for a subsequent infringement against the patentee? If he could, then the patentee would be in a worse predicament than a mere wrong-doer.' If he could not, then the assignment would become, in his hands, in a practical sense worthless, as it would be open to depredations on all sides. On the contrary, if we construe the tenth section of the act to be merely directory, full effect is given to the apparent object of the provision, the protection of purchasers. Why should an assignment be required to be recorded at all? Certainly not for the benefit of the parties, or their privies; but solely for the protection of purchasers, who should become such, bona fide, for a valuable consideration, without notice of any prior assignment. By requiring the recording to be within three months, the act, in effect, allows that full period for the benefit of the assignee, without any imputation or impeachment of his title for laches in the intermediate time. . If he fails to record the assignment within the three months, then every subsequent bona fide purchaser has a right to presume, that no assignment has been made within that period. If the assignment has not been recorded until after the three months, a prior purchaser ought, upon the ground of laches, to be preferred to the as-signee. If he purchases after the assignment has been recorded, although not within the three months, the purchaser may justly be postponed, upon the ground of mala fides, or constructive notice of the assignment. In this way, as it seems to me, the true object of the provision is obtained, and no injustice is done to any party. In respect to mere wrong-doers, who have no pretence of right or title, it is difficult to see, what ground of policy or principle there can be in giving them the benefit of the objection of the non-recording of the assignment. They violate the patent right with their eyes open; and as they choose to act in fraudem legis, it ought to be no defence, that they meant to defraud or injure the patentee, and not the assignee. Indeed, if the defence were maintainable, it. would seem to be wholly immaterial, whether they knew of the assignment or not. In furtherance, then, of right, and justice, and the apparent policy of the act ut res magis valeat quam pereat, and in the absence of all language importing that the assignment, if unrecorded, shall be deemed void, I construe the provision as to recording to be merely directory, for the protection of bona fide purchasers without notice. And assuming that the recording within the three months is not a prerequisite to the validity of the assignment, it seems to me immaterial (even admitting that a recording at some time is necessary) that it is not made until after the suit is brought It is like the common case of a deed required by law to be registered, on which the plaintiff founds his title, where it is sufficient, if it be registered before the trial, although after the suit is brought; for it is still admissible in evidence as a deed duly registered.

The next objection taken is to the ruling •of the district judge-upon the point of the construction of the claim in the specification in the patent. The learned • judge ruled “That the true construction of the patent was, that the Pittses did not claim to be the inventors of an endless apron, or an endless apron of troughs or cells. But the true construction must be that they claimed it only in a machine for threshing and cleaning grain, operating substantially in the way described; and that their claim was good and valid as the inventors of its application to such a machine in the manner described.” I am of opinion that the construction thus given by the learned judge of the claim of the patentees in the specification is the true one. What is the language of the specification? “We claim as our invention the construction and use of an endless apron, divided into troughs or cells, in a machine for •cleaning grain, operating substantially in the way described;” that is, described in the specification. It is, therefore, clear that it was not a claim of an invention of an endless .apron of troughs or cells; but of an endless apron of troughs and cells combined with a particular threshing machine, described in the specification. If this combination was new, and invented by the patentees, then it was valid in point of law, which is all that the learned judge purported to state. And this disposes in effect of the next objection; for if the combination was new, it is a patentable matter, although a part of the apparatus might have been applied to similar purposes in other and different machines. Under such circumstances it would not be a mere application of an old apparatus to a new purpose, but a new combination of machinery, incorporating, in part, an old apparatus for a new purpose.

The third instruction asked and refused by the court is objectionable in several respects. It proceeds upon the assumption of the existence of facts, which it was no part of the duty of the court to assume or affirm. It undertakes to put a constniction upon the invention, as claimed by the patentees, which is not (as has been already suggested) correct. It separates the consideration of the endless belt of troughs from the other machinery, with which it was combined, as though it were claimed as a distinct invention, and not in combination, and asks the court to give an instruction founded upon that supposition. It was no part of the duty of the court thus to break up the case into fragments, or to give an instruction as to abstract points, not actually presented by the state of the cause. The like answer may be given for similar reasons to the fourtli instruction asked and refused.

The fifth instruction, asked and refused, involved matter of fact, viz. the character of Parsons’ machine, and in what respects It was identical with, and in what respects it differed from, the machine of the Pittses, and that of Whitman; and therefore was properly refused; for the learned judge had no right to determine upon any such matters, or to give the instruction prayed for. The instruction upon this point supposed in the motion for a new trial to have been given by him, was in fact (as he states) never given. On the contrary, he gave the instruction in the form and manner, which are stated by the counsel for the plaintiff in then-written objection to the motion for a new trial. In short, he left the whole as a matter of fact for the consideration of the jury, with such observations on his own part, as were fit to be submitted by way of commentary on the evidence, for their consideration.

It may here be proper to add, that the court is never bound to give an instruction to a jury upon a point of law, even when pertinent, and relevant to the fact of the case, precisely in the form and manner in which it is put by counsel; for that may sometimes have a tendency to mislead the jury, and withdraw their attention from the merits of the case. All that is the duty of the court, is to give such instructions to the jury in point of law, as clearly arise upon the evidence, and are proper for the consideration of the jury, upon the issue before them, in such terms and in such a manner as shall comport with the real merits and justice of the case, and enable the jury to give a proper verdict in point of law. Having done this, the court has discharged its entire duty, and is not bound to respond to instructions asked, which are of a more general form, or of an abstract nature, or are not necessary for a just decision of the cause.

Before closing this opinion, it is fit to take notice of an objection, raised in the argument at the bar on behalf of the' defendant, that the present patent is professedly for “a new and useful improvement,” and not for new and useful improvements (in the plural); and that consequently it covers only the whole combination in its entirety; and not the several improvements specified in the claim, separately and distinctly from each other. The conclusion, intended to be de duced from this argument, is, that inasmuch as the evidence did not show a violation of the whole combination, but of one only of the asserted improvements, therefore, the present suit is not maintainable. I cannot assent either to the premises, or to the conclusion; and in my judgment, each is unsupportable in point of law. There is, in my judgment, no difficulty in maintaining the validity of a patent (as in the present case), for a machine combining several distinct improvements, each of which is the invention of the patentee, and also of including in the same patent a right to each of these several and distinct improvements. In other words, the patentee may in such a case take out a valid patent for the combination, and also include therein a right to each distinct improvement severally contained in the same machine. Such was the doctrine maintained by this court in Wyeth v. Stone [Case No. 18,107], and it stands confirmed by the obvious intent of the ninth section of the patent act of 1837, c. 45 [5 Stat. 101], which gives to. the patentee a right of action for a piratical use of any one of his invented improvements, which is distinctly stated in his patent, although he may, by mistake, accident, or inadvertence, have claimed others in his specification, of which he was not the inventor.

[For other cases involving this patent, see note to Pitts v. Wemple, Case No. 11,194.]

In construing a patent for an invention we are not to look alone to the descriptive words contained in the letters patent, but we are to construe those words in connection with the specification, which in our law is always annexed to and made a part of the letters patent Here, indeed, the letters patent described the invention to be “a new and useful improvement (this is the common formu-lary) in the machine for threshing and cleaning grain;” - but then it is afterwards added, “a description whereof is given in the words of the said John A. Pitts and Hiram A. Pitts, in the schedule hereto annexed, and is made a part of these presents.” So, that for the nature and character of the improvement and the claim of the invention we are to look to the specification. Now, in the specification, the patentees begin by saying, that they “havé .invented a new and improved combination of machinery for separating grain from the straw and chaff, as it proceeds from the threshing machine;” so that we here clearly see, that the patentees claim the entire combination of the machinery as new. In the summing up of their invention they claim four distinct improvements in the machinery, as their invention. The words are: “(1) We claim as our invention the construction and use of an endless apron divided into troughs or cells in a machine for cleaning grain, operating substantially in the way described (i. e. in the specification); (2) we claim also the revolving rake for shaking out the straw, and the roller for throwing it off the machine, in combination with such a revolving apron as set forth; (3) we claim the guard slats, E, in combination with a belt constructed substantially as above described; and (4) the combination of the additional sieve and shoe, with the elevator for carrying up the light grain in the manner and for the purpose herein set forth.” It is plain, therefore, that the patentees not only claim the entire machineiy in combination, but also the four improvements above enumerated as their invention. And if they are their invention, there is no objection, in point of law, to their claim. And a violation of any one of the specified improvements, without any violation of the others, by the defendant, is sufficient to entitle the patentees, or their assignees, to an action for the infringement. So that in every way, in which I am able to contemplate the case, the motion for a new trial and in arrest of judgment ought to be overruled. The district judge concurs in this opinion, and, therefore, the motion is overruled.