CHAPTER IX.

OF THE REMEDY FOR AN INFRINGEMENT BY ACTION AT LAW.

§ 844. THE act of Congress of July 4, 1836, ch. 357, § 14, provides that damages may be recovered for an infringement by "an action on the case," a remedy which exists equally at common law, for the violation of the right secured by letters-patent.1

§ 345. I. Parties. The statute also provides that the action shall be brought in the name or names of the person or persons interested, whether as patentee, assignees, or as grantees of the exclusive right within and throughout a specified part of the United States." 2

§ 346. Formerly, the grantee for a particular district could not bring an action on the patent in his own name. But the statute has made him a party interested in the patent, and consequently, in his own district, he may sue in his own name.1

But in order that the assignee of a sectional interest may sue in his own name, the assignment must clearly convey to him the entire and unqualified monopoly which the patentee held in the specified territory, excluding the patentee himself as well as others; for any assignment short of this is a mere license.5

It has been recently held that the grant of a right to construct and use fifty machines within certain localities, reserving to the grantor the right to construct and to license others to construct, but not to use them therein, was the grant of an exclusive right under 1 Bull. N. P. 76.

2 Act of July 4, 1836, ch. 357, § 14. It seems that no previous notice or claim of a right to the exclusive use of an invention is necessary to enable a patentee to maintain an action for an alleged violation of his patent right. Ames v. Howard, 1 Sumner, 482.

Tyler v. Tuel, 6 Cranch, 324.

Such a suit may be maintained although the plaintiff is the grantee of a right to use only a limited number of the patented machines in the particular district, provided it is an exclusive right, and it may be maintained against the patentee himself. Wilson v. Rousseau, 4 How. 646.

the patent of 1836, and that consequently the suit was rightly brought in the name of the assignees, although agreed to be at the expense of the grantor.1

An action may properly be brought by the patentee in behalf of one to whom he has granted an exclusive license and who has been damaged by the infringement.2

It has also been held that one joint owner of a patent can bring an action of infringement against his co-owner for making and selling machines in a manner which does not respect his rights.3

§ 347. Where the patentee has assigned his whole interest, either before or after the patent was taken out, the action can only be brought in the name of the assignee ; but where the assign

1 Washburn v. Gould, 3 Story, 122. Goodyear v. McBurney, 3 Blatchf. 32.

Pitts v. Hall, 3 Blatchf. 201. Herbert v. Adams, 4 Mass. 15. Affirmed by ruling in Gayler v. Wilder, 10 How. 477. "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 in which the law requires. Fitzgerald possessed the 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 thinks 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 province 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. As long ago as

ment is of an undivided part of the interest, the action should be brought in the joint names of the patentee and the assignee, as representing the whole interest.1

In a recent English case, it was held that the assignee of a separate and distinct portion of a patent may sue for an infringement of that patent, without joining one who has an interest in another part, the damages to be recovered accruing to the former alone. The patentee, having obtained a patent for "improvements in lace and other weavings," assigned to the plaintiffs "all share and interest in it so far as it related to or concerned the making, using, exercising, and vending of the said invention of improvements in the manufacture of close weavings in lace, and of twisted purle edges of lace and other weavings in twist lace machines, as described in the sixth part of the specification," &c. The plaintiffs brought an action in their own name for alleged infringement of this part of the patent, to which the defendants pleaded want of right to sue. This was demurred to by plaintiffs, and the demurrer sustained by the court. Erle, C. J. said (Crowder and Byles, J. J. concurring): "I am of opinion that the plaintiffs are entitled to judgment on these demurrers. The main question which has been argued before us arises apparently for the first time; therefore we must decide it according to general principles of law, no authority having been cited which bears any very close analogy. That question is, whether an assignment of part of a patent is valid. I incline to think that it is. It is every day's practice, for the sake of economy, to include in one patent several things which are in their nature perfectly distinct and severable. It is also every day's 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. 4 Mason, 15 (Herbert v. Adams). We understand the same rule has prevailed in other circuits, and if it were now changed, it might produce much injustice to assignees who have relied on such assignments, and defeat pending suits brought upon the faith of long-established judicial practice and judicial decision. Fitzgerald sets up no claim against the assignment, and to require another to complete the transfer would be mere form. We do not think the act of Congress requires it; but that when the patent issued to him, the legal right to the monopoly and property it created was, by operation of the assignment then on record, vested in Enos Wilder." Per Taney, C. J.

1 Whittemore v. Cutter, 1 Gallis. 429, 430. An assignee of the exclusive right to use a certain number of machines in a certain district, may join his assignor with him in a bill for an injunction. Woodworth v. Wilson, 4 How. 712.

Dunnicliff v. Mallett, 7 Com. Ben. N. s. 209.

practice to get rid by disclaimer of part of a patent which turns out to be old. Being therefore inclined to think that a patent, severable in its nature, may be severed by the assignment of a part, I see no reason for holding that the assignee of a separate part, which is the subject of infringement, may not bring an action. Then, are the assignees, bringing an action for an injury done solely to them by an infringement of that part of the patent which is thus vested in them alone, liable to be defeated because they have not joined the assignees of other parts of the patent, who have no manner of interest in the damages sought to be recovered in such action? I see no reason why the action should be defeated on such ground. I see no reason why the plaintiffs should be put to the trouble and expense of applying for leave to use the names of the other parties, or of compelling them by means of a judge's order to permit their names to be used upon an indemnity, where no practical advantage whatever is to be gained by it, the injury being to the assignees of part only, and the damages to be recovered being theirs only. It is said that the defendants may possibly be prejudiced by the non-joinder of the other parties, inasmuch as they might thereby be deprived of the advantage of any admissions which might have been made by them. I cannot think that it is a tenable ground of objection, because, if those parties were joined, any admissions by them would not be binding on the now plaintiffs, unless made in and for the purpose of the suit. Then, as to the alleged inconvenience of the matter being brought in question several times, I must confess I do not feel the force of the argument. In the ordinary case of a patentee trying the validity of the patent against several infringers, the power given to the judge to certify under 5 and 6 W. 4, ch. 83, s. 3, is only a provision in favor of the patentee, to entitle him to treble costs where the validity of the patent has already been established. I am not aware of any authority or of any principle which precludes the assignee of part of a patent from sueing for an infringement of that part; nor do I think it would lead to any multiplying of actions to permit it. I am therefore of opinion that our judgment should be for the plaintiff on both these demurrers."

This opinion is not to be reconciled with that of Taney, C. J., in the case of Gaylor v. Wilder, supra; still less with that of Grier, J., in Blanchard v. Eldridge.1 Here the plaintiff, having obtained a

1 1 Wall. C. C. 337.

patent for turning every kind of irregular forms, assigned to one Carter "the full and exclusive license, right, and permission to have, hold, use, and enjoy Blanchard's patent for turning irregu lar forms, &c., so far as said improvement is or may be used for turning shoe lasts, boot and shoe trees, and hat blocks, and also for turning spokes for wheels of all kinds of carriage-wheels, and all articles that form any part in the construction of carriages," &c. He (the patentee, Blanchard) then brought the present suit for an alleged infringement of these rights, granted exclusively to Carter. The defendant moved for a new trial on the ground that the plaintiff was not entitled to sue, but the motion was refused. Grier, J.: "The point here raised by the defendant's counsel is not without its difficulty, and the force of his argument cannot be evaded, if his assumption be true, that this deed transfers to Carter the legal title of that portion of the patent which it purports to vest in him. But if it does not so operate, it cannot be noticed in a court of law, and cannot affect the case. As the grants of the crown were at common law construed with the greatest strictness, the privileges granted by a patent for a monopoly would probably not have been treated as capable of assignment unless made so by the letter of the grant. Since the statute 21 James I., patents for useful inventions (notwithstanding the statute itself mentions the 'inventor' only) have always granted the privilege or monopoly to the inventor, his executor, administrator, and assigns. These monopolies, therefore, are assignable as other personal chattels, by force of the grant which creates them. As a chattel, also, it might be held by two or more joint owners; hence any undivided portion or interest in the whole as a unity might be assigned, and if the original grantee died, such assignees might join in action for infringement of their right. But the patent right itself was insusceptible of local subdivision.2 As a privilege or monopoly it was an entire thing, indivisible and incapable of apportionment.3

"But the act of Congress of 1836 has regulated the assignment of patents. Sec. 11 provides that a patent shall be assignable,— (1.) As to the whole interest; (2.) As to any undivided part thereof; (3.) An exclusive right may be granted throughout any specified

1 Boulton v. Bull, 2 H. Blackst. 463. Whittemore v. Cutter, 1 Gall. 429. Brooks v. Byam, 2 Story, 525.