Lead Opinion
delivered the opinion of the court.
Thrеe 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
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 aсts. 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.
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
Applying these prinсiples 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 becаme 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
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 thаt 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
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 anothеr 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
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 forgоtten, 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.
Dissenting Opinion
I dissent from the opinion of a majority of the judges in this .case. The point of difference, I think, is essential to the maintenance of the rights of the public and also of inventors.
By the sixth section of the patent act of 1836, it is provided, “ that any person or persons having discovered or invented any new or useful art, machine, manufacture, or composition of matter, or any new or useful improvement on any art, machine, manufacture, or composition of matter, not known or used by others before his or their discovery or invention thereof f may apply for a patent, &c. The applicant is required to “ make oath or affirmation that he does verily believe that he is the original and, first inventor,” &c., “ and that he does not know or believe that the same was ever before known or used.”
The seventh section authorizes and requires the Commissioner of Patents “ to make or cause to be made an examination of the alleged new invention or discovery ; and if on such examination it shall not appear to the Commissioner that the same had been invented or discovered by any other person in this country prior to the alleged invention or discovery thereof by the applicant, or that it had been patented or described in any printed publication in this or any foreign country,” &c., the Commissioner may grant a patent.
In the fifteenth section it is provided, that whenever it shall satisfactorily appear that the patentee, at the time of making his application for the patent, believed himself to be the first inventor or discoverer of the thing patented, the same shall ndt be held to be void on account of the invention or discovery, or any part thereof, having been before known or used in any foreign country, it not appearing that the same or any substantial part thereof had before been patented or described in' any printed publication.”
From the above extracts, it is seen that the patentee must be the'inventor of the machine, or the improvement of it, or he can have no right. If the thing was known or used by others, be cannot claim a patent. Or if it was patented in a foreign country, or described in any publication at home or in any
Let these provisions of the statute be compared with the two last paragraphs of the charge of the court, as stated in the third exception : —
“ And said court further instructed the jury, that if they found that the use made by James Conner of plaster of Paris was confined to a single iron chest, made for his own private use after said Fitzgerald’s discovery and experiments, then it was not in the way of Fitzgerald’s patent, a'nd the same was valid; but if the jury found that said James Conner made his said safe, as claimed, and tested it by experiments, before Fitzgerald’s invention and improvement, and before he tested the same, then said Fitzgerald was not the first inventor, as claimed, and was not entitled to said patent.”
This charge stands disconnected with any other facts in the case, except those named, and, in my judgment, it is erroneous. . If Conner’s safe were identical with Fitzgerald’s, and though it was of prior invention, yet if it were not tested by experiments before Fiizgerald’s improvement, and before he tested the same, the jury under the instruction were bound to find for Fitzgerald. And the case was thus made to turn, not on the priority of invention only, but upon that and the fact of its having been tested by experiments. This introduces a new principle into the patent law. The right under the law depends upon the time of the invention. An experimental test may show the value of the thing invented, but it is no part of the invention.
“ The court further charged, that, independently of these considerations, there was another view of the case, as it respected the Conner safe; that it was a question whether the use of it by him had been such as would prevent another inventor from taking out a patent; 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 of the improvement.”
If there be any thing clear in the patent' law, it is that the original inventor means the first inventor, subject only to the provision stated in the fifteenth section. This instruction presupposes that the safes are the same in principle. Now, if the invention was patented abroad, or was described in a foreign publication, both of which were unknown to the inventor in
Conner’s safe, as appears from the bill of exceptions, was used in his counting-house, being accessible to every one, some six or eight years. In 1838 it passed into other hands ; but into whose hands it does not appear. In 1843, Fitzgerald obtained his patent... How long before that he made experiments to test the invention ife not proved. At most, the time must have been less than five years. This is a short period on which to found a presumption of forgetfulness. The law authorizes no such presumption. It can never become the law. It is not founded on probability or reason. The question is, Was Conner’s invention prior to that of Fitzgerald ? That it was of older date by some ten or twelve years is proved. And the instruction, it must be observed, was founded on the supposition that both inventions were similar.
The instruction seems to attach great-importance to the fact that Conner’s safe was used only for his private purpose. This is of no importance. The invention is the question, and not the manner in which the inventor used it. The safe was constructed at the foundery, and must have been known to the hands there employed. How can it be ascertained that Fitzgerald was not informed by some of these hands of the structure of Conner’s safe, or by some one of the many hundreds who had seen it in his counting-house in the city of New York ? It was to guard against this, which is rarely if ever susceptible of' proof, that the act is express, — if the thing patented was known before, the patent is void. If the fact of this knowledge in any one be established, it is immaterial whether the patentee may have known it or not, it avoids his patent.
-The law,. o.n this subject, is not founded upon any supposed notions of equity. A foreign patent for the samé' thing, or a description of the thing in a foreign publication, is as effectual to. avoid the patent as if the patentee had seen the prior invention. Notice to him is not important. The law is adopted op.
Dissenting Opinion
dissenting.
Differing from the majority in the decision just pronounced, I proceed to state the grounds on which my dissent from that decision is founded.
' On two essential points in this pause, it seems to me that the learned justice who tried it at the Circuit has erred, and that the decision here should therefore have been for a reversal of his judgment. Those points involve, first, the- right of the plaintiff below to maintain his action upon the title or right of action deduced from Fitzgerald through Enos and Benjamin Wilder; and secondly, a right to or interest in the subject of the suit on the part of the .plaintiff below, admitting that subjеct to have been originally invented and used by some other person than Fitzgerald; a right founded upon an assumption that this subject had been used in private only, or had, in the language of th‘e learned justice, been “ finally forgotten or abandoned ” by such first inventor. These points are presented by the first and third exceptions of the plaintiffs in error to the rulings at the trial below. The plaintiff in the Circuit Court claimed by assignment from B. G-. Wilder, assignee of Enos Wilder, assignee of Daniel Fitzgerald, alleged to have been the inventor of the Salamander safe. By the paper deduction of title, it appears that, on the 11th day of April, 1839, Fitzgerald, alleging that he had invented an improvement called the Salamander safe, for which he was about to apply for letters patent, for the consideration of five thousand dollars, sold the interest he then had, or might thereafter have, in this invеntion, to Enos Wilder; that Enos Wilder, on the 1st day of September, 1843, for the consideration of one dollar, assigned and transferred to the plaintiff all the right, title, and interest which he had derived from Fitzgerald, under the agreement of the 11th of April, 1839 ; that no patent issued for this Salamander safe until the year 1843, when a patent was granted to Daniel Filz
It must be recollected, that this is an- action at law; and in order to maintain it, the plaintiff was bound to set out and to prove a legal title. Has he done either ? What was the character of the interest or title transferred from Fitzgerald to Enos Wilder ? This could not tran'scend the interest or title possessed by Fitzgerald himsеlf; and what was this ? A title to any specific machine which he may have constructed, and of which no person could rightfully deprive him; and a claim upon the good-will and gratitude of the community, if in truth he should have conferred upon them a benefit by the discovery and construction of his machine. I speak now in reference to rights derivable from the common law; and independently of the Constitution or of statutory provisions. The mere circumstances of inventing and constructing .a machine' could no more inhibit its imitation, than would the structure Or interior arrangement of a house of peculiar ingenuity or convenience prevent the like imitation by any one who could possess himself of its plan. The mere mental process of devising an invention enters not into the nature of property according to the common law; it forms no class or division in any of its enumerations or definitions of estates or property, and is a matter quite too shadowy for the practical character of that sturdy system.
A doctrine contrary to this, though with some discrepancy amongst the judges as to its extent, seems at one time to have obtained in the King’s Bench, as propounded in the case of Millar v. Taylor, in 4 Burrow, 2305, in opposition to the profound and unanswerable reasoning of Mr. Justice Yatés; but upon a review of the same question in-the Lords, in the case of Donaldsons v. Becket and others, the doctrine of the King’s Bench was repudiated, and that of the common law, as asserted by Yates, Justice, vindicated and restored. And,' indeed, if, according to the opinions of some of the judges in the case of Millar v. Taylor, the mere mental process of invention constituted an estate or property at the common law, and property vested in perpetuo, except so far as it should be transferred by the owner, it is difficult to perceive the necessity of a cautious and complicated system for the investment and security of interests already perfect, and surrounded with every guard and' protection- which is inseparable under the
It is the patent alone which creates an estate or .interest in the invention known to the law, and which can be enforced either at law or in equity, either by the inventor .or by the person to whom, by virtue of the statute, he may assign his rights. Down to the act of Congress of 1837, nothing but the estate, interest, or property created or' invested by the patent itself, was made assignable. The language of • the law is, that “ every patent,” “ the exclusive right under any patent,” “ the thing patented,” may be assignable. The fact or existence of a patent is in.every instance inseparable from the right given. It is this’ fact and this only which impresses the quality of. assigna'bility. Of course, under thеse .provisions there could be no .transfer of the legal title previously to a^patent.
By section sixth of the, act of Congress approved March
The second instance in which I hold the learned justice who tried this cause to have erred is that in which he instructed the jury as follows: — “ 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 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 of the improvement.” In considering this instruction of the leаrned judge, the first vice with which it appears to be affected is its violation of a rule thought to be universally applicable to instructions to juries in trials at law; and that rule is this, that instructions should always arise out of, and be limited to, the facts or the evidence in the cause to which the questions of law propounded from the bench should be strictly applicable ; and that instructions which are general, abstract, or not springing from, and pertinent to, the facts of the case, are calculated to mislead the jury, and are therefore improper. Tried by this rule, the instruction of the learned judge, so far as it relates to Conner’s not having made his discovery public, or having finally forgotten or abandoned it, is certainly irrelevant to and unsustained by, any evidence in the record. So far is the
,. The act of February 21st, 1793, (1 Stat. at Large, 318,) provides, that when any citizen or citizens of the United States shall allege that .he or they have invented any “ new and useful art, &c., not known or used before the. application," &c.
By the act of April 17th, 1800, (2 Stat. at Large, 38,) which extends the privilege of patents to aliens, proof is required that the art, invention, or discovery hath not been known or used in that or any foreign, country. It is true that this requisition has been so far relaxed as to admit of the patenting in this country inventions which had' been invented and used abroad,-but with respect to this country the invention, &c. must still be original.
In the act of July 4th, 1836, (5 Stat. at Large, 117,) reorganizing the Patent-Office, the language of the sixth section is as follows: “ That any person or persons having discovered or invented any new and useful art, &c., not known or used by others before his or their discovery .” &c. ' The language and import of the laws here cited are too plain to require comment,
Order.
This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the Southern District of New York, and was argued by counsel. On consideration whereof, it is now here ordered and adjudged by this court, that the judgment of the said Circuit . Court in this cause be, and the same is hereby, affirmed, with costs and damages at the rate of six per centum per annum.