APPEAL from the Circuit Court of the United States for the Eastern District of Michigan.
Lafayette F. Thompson and Asahel G. Bachelder, claiming to be inventors of a railroad brake, executed, before letters-patent were issued to them therefore, the following assignment, which was duly recorded in the Patent Office:--
'Whereas we, Lafayette F. Thompson, of Charlestown, and Asahel G. Bachelder, now or late of Lowell, in the State of Massachusetts, have invented an improved mode of operating the brakes of railway cars, and have applied, or intend to apply, for letters-patent of the United States of America therefor.
'Now, therefore, this indenture witnesseth, that for and in consideration of $100, in hand paid, the receipt whereof is hereby acknowledged, I have assigned and set over, and do hereby assign, sell, and set over, to Henry Tanner, of Buffalo, in the State of New York, all the right, title, and interest whatever which we now have, or by letters-patent would be entitled to have and possess, in the aforesaid invention, the said invention being described in the specification as prepared and executed by us, or to be prepared and executed by us, for the obtaining of said letters-patent; the whole to be enjoyed and held by the said Henry Tanner and his legal representatives, to the full extent and manner in which the same whould have been or could be held and enjoyed by us had this assignment never been made.
'And we do, by these presents, authorize the Commissioner of Patents to issue the said letters-patent to the said Henry Tanner and his legal representatives, as the assignee of our whole right and title to the same and to the new invention aforesaid.
'In witness whereof, we have hereto set our signatures and seals, this first day of April, A.D. 1852.
'LAFAYETTE F. THOMPSON. [SEAL.]
'ASAHEL G. BACHELDER. [SEAL.]
'Witness, R. H. EDDY.'
Letters-patent were issued on the sixth day of the following July to Tanner, who, July 13, 1854, assigned to Thomas Sayles all his remaining right and title in them for the unexpired term thereof, and 'any extension thereof that may hereafter be granted,' excepting, however, certain reserved territory and specified railroad corporations. Said letters were renewed and extended for seven years from July 6, 1866.
After that date, and until some time in 1873, Hendrie infringed the patents within the territory not so reserved, and Sayles filed his bill for an account, &c., to which Hendrie demurred, upon the ground that Sayles had no legal title to the extended term. The demurrer was overruled, and a decree for want of an answer passed for the complainant. Hendrie thereupon appealed here.
Mr. D. Bethune Duffield for the appellant.
Unless the complainant has the sole legal title to the extended term, he cannot maintain this suit. 1 Barb. Ch. Pr. 39; 1 Dan. Ch. Pr. 241. The whole case depends upon the assignment of April 1, 1852, to Tanner. If it gave him such an interest in that term that the legal title thereto would vest in him the moment the extension should be granted, the demurrer is bad.
The assignment is to be construed like any other contract to carry out the intention of the parties, and to further that intention their situation and the surrounding circumstances may be considered. 2 Pars. Contr. 499; Shore v. Wilson, 9 Cl. & Fin. 555-569; Mumford v. Getling, 7 C. B. N. S. 309; Carr v. Montefiore, 5 B. & S. 427. It was made before the issue of the patent. The inventors then had an inchoate right to the exclusive use of their invention, it being complete; and they could assign it, so that the legal right which would result from the issue of the patent would vest in Tanner. Gayler v. Wilder, 10 How. 477. And they perhaps had an inchoate right to an extension, assignable with the same effect as their right to a patent. Railroad Company v. Trimble, 10 Wall. 367.
The granting clause of the instrument, when taken as a whole, plainly indicates the invention and the letters-patent intended to be conveyed, as described in and to be obtained by the specification, and the latter was not prepared to obtain the extension.
And again, the inventors authorize the issue of 'said letters-patent' to Tanner, as the assignee of their 'whole right and title to the same,' not to any letters-patent, but to 'said letters-patent.' There is no grant of, and no reference to, an extension. This clearly shows that the original term was alone intended to be conveyed.
This court has never passed directly upon the question whether an assignment of the 'invention' necessarily includes both terms of a patent, or clearly shows an intention so to do. The authorities on the circuit rule otherwise. Clum v. Brewer, 2 Curt. C. C. 520; Waterman v. Wallace, 13 Blatch. 132.
Mr. Albert H. Walker, contra.
MR. JUSTICE CLIFFORD delivered the opinion of the court.
Notes edit
This work is in the public domain in the United States because it is a work of the United States federal government (see 17 U.S.C. 105).
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