Page:Federal Reporter, 1st Series, Volume 8.djvu/610

596 FEDERAL REPORTER. �that I have or may produce in button-hole attacliments or button-hole machines, and agree to assign interests, as stated above, and make application forletters patent forsucb improvements or machines, the same to be held and enjojed" by the said Smith and Downer. Then the assignment, which is signed by Eandel alone, goes on to say : �"And it is a subject of agreemeiit by myself and the said assignees, this date, that we will neither of us sell, assign, or set over to other parties any portion of our interest in said patent reissues, or new patents, in said button- hole attachments or machines, that we now have or may have, unless by the written consent of each party now owning the same." �Although this assignment does not refer specifically to any partic- ular improvements which Eandel had already made, and had not patented, yet the use of the words "that I have or may produce" shows that the existence of improvements which he had made and not yet patented was before the minds of himself and Smith and Downer when this assignment was made, on the nineteenth of Sep- tember, 1876. Eandel testifies that the first machine, embracing the invention described in patent No. 192,008, was made in August, �1876. Eandel agreed, in said assignment, to apply for patents "for such improvements or machines," and also agreed not to assign to other parties any portion of his interest in "new patents in said button- hole attachments or machines" that he might have, without the written consent of Smith and Downer. The "new patents" referred to are pateiits for such improvements. They were to be held by Smith and Downer, each an undivided third thereof. This assignment was recorded in the patent-office September 22, 1876. �It is-very clear that the legal title of patent No. 192,008 is in the Empire Company. The patent was properly issued to Eandel, jointly ■with Cipperly, Cole, and Haslehurst, under the assignment of May 22, �1877, which contained a reqrest to that effect by Eandel. The stat- ute (section 4895, Eev. St.) provides that "patents may be granted and issued, or reissued, to the assignee of the inventer or discoverer, but the assignment must first be entered of record in the patent- office." Under the decision in Gayler v. Wilder, 10 How. 477, the legal title to the patent would, under said assignment of May 22, 1877, have been in Eandel and the other three, jointly, even if the patent had afterwards been issued to Eandel alone. �The question arises, then, whether Downer aequired an equitable title, as against Eandel, to the improvements which Eandel had so inade and perfected prior to August 16, 1876. The assignment of ��� �