Faulks v. Kamp.

fendant Brown, to whom the patent was granted. Faulks, orator, first acquired, by various mesne conveyances, the whole title for this territory. He conveyed shares to each of the defendants, and they, with him and a son of his, formed a copartnership, which carried on the business of baling hay under the patent. Then they sold their interest in the partnership business and property, including the patent, to him, and, in their conveyances of the patent, each described the thing conveyed as the full and entire right, title, and interest which he had and possessed in and to the patent, and the inventions and improvements described in and secured by it. He conveyed an interest to each of the other orators. The defendants now deny the validity of the patent, because, they say, Brown was not the original and first inventor of the improvement described in it; and they have acquired a prior patent, which, they say, covers the same improvement, under which they claim the right to practise the invention; and they deny all infringement of the patent.

There is considerable doubt whether the patent, as between the owners and the public generally, is of any validity. Hay has long been baled, to the common knowledge of all. The whole invention in controversy consists in baling hay cut short, in the same manner. The well known process of baling hay was applied to another kind of hay. The short cut hay was well known before, and the process made no change in its properties or quality. When baled, it could be more conveniently handled, as common hay could be. (Langdon v. DeGroot, 1 Paine, 203; Alcott v. Young, 16 Blatchf. C. C. R., 134.)

But, it is argued for the orators, that they are entitled to have the patent treated as valid as against the defendants, whether it is valid generally or not; and this claim seems worthy of consideration. Every seller of personal property impliedly warrants that he has title to, and right to sell, what he assumes to sell. His undertaking to sell includes an undertaking to that effect. (2 Black. Comm., 451; Long on Sales, Rand's ed., 203; Defreeze v. Trumper, 1 Johns., 274;

VOL. XVII-28

Faulks v. Kamp.

Coolidge v. Brigham, 1 Met., 547.) In Heermance v. Vernoy, (6 Johns., 5,) it was held, that a sale of a millstone of a barkmill to a tannery, as personal property, which might belong to the realty and not pass by such a sale, implied a warranty of title to it as personalty; and, in Hannum v. Richardson, (48 Vt., 508,) that a sale of a negotiable note, although endorsed without recourse, involved a warranty that it was a genuine note, due the seller. It is urged strenuously, in behalf of the defendants, that these principles do not apply to sales of pat ent rights, on account of their incorporeal nature and the interests of the public. In Medina v. Stoughton, (1 Salk., 210,) Lord Holt is reported to have said that such a warranty was implied upon a sale by one in possession, and not by one not having possession; but this saying is doubted, and the distinction denied, by Mr. Justice Buller, in Pasley v. Freeman, (3 T. R., 51.) But, if possession should be material, the defendants appear to have claimed and had the exclusive right to this invention, and to have sold and conveyed all the right possessed by them. The nature of the right covered by letters patent does not seem to be such that a warranty of the right cannot be implied. The patent purports to grant the right to exclude all others from practising the invention. It adds nothing to the right of the owner to practise it. This exclusive right is property, recognized and protected by law. (Cammeyer v. Newton, 94 U. S., 225.) Whoever assumes to sell a patent assumes to sell that property, and assumes that he has it to sell. This suit is between these parties, and involves their rights alone, and not the rights of the public. The determination of the validity of the patent in this suit will only determine its validity between them, and not affect its validity as to others not parties. The defendants, in possession and enjoyment of that exclusive right, assumed to sell and transfer it. After that, in justice, they ought not to be heard to say that they had it not, and did not sell it, and to be allowed to derogate from their own grant by setting up that it did not pass. They may have deprived themselves of the right to practise it within the territory, when otherwise

Faulks ". Kamp.

they would have retained the right in common with all others; but, if they did, that would not so affect the public as to avoid their obligation. They could exclude themselves in that way by contract, independently of the patent, and the contract would be upheld, if it went no further than upholding this patent as against them, in the territory in question, would take them. It would be upon good consideration, reasonable, and only in partial restraint of trade. (Pierce v. Woodward, 6 Pick., 206; Chitty on Cont., 576.) The question as to the right of a vendor of a patent to deny its validity afterwards came up in Chambers v. Crichley, (33 Beavan, 374.) That case was similar to this in important features. The parties had been partners in the manufacture of stoves, under a patent which they owned. The defendant sold his share in the partnership assets, including the patent, to the plaintiffs, but afterwards continued the manufacture, and the suit was brought for that infringement. Upon that case, Sir John Romilly, Master of the Rolls, in delivering judgment, said: "I do not intend to express my opinion as to the validity of Wright's patent. I will assume, for the purpose of my judgment, that it is worth nothing at all. But this is certain, that the defendant sold and assigned that patent to the plaintiffs as a valid one, and, having done so, he cannot derogate from his own grant. It does not lie in his mouth to say that the patent is not good." And an injunction and an account were decreed. It is argued, for the defendants, that, as the conveyances were of the right, title and interest of the grantors, the warranty would only extend to whatever right they might have, which passed, and that the warranty was kept. But, the conveyances were made to carry out the sale, in the manner required by law for passing the title, and the warranty grew out of the sale, and not out of the form of the convey

ance.

The patent subsequently purchased by the defendants may be better than this for covering this invention, but, if it is, it cannot help the defendants, as against the orators. It is familiar law, and has been for a long time, that a warranty of

De Florez v. Raynolds.

title or right draws to it any after acquired right or title of the warrantor, and carries it to the benefit of the person to whom the warranty runs. So, whatever right, if any, the defendants acquired to the invention covered by this patent, enured directly to the benefit of the orators.

It is also urged, that the purchaser knew of the defects, and was not deceived, and that, therefore, the defendants are not estopped. But, the rights of the orators do not rest upon the estoppel merely; they rest upon the purchase, which must operate so that the orators may have what they bought, and so that the defendants shall not both sell and keep the same thing.

The evidence of the acts, conduct and claims of the defendants leaves no room for any fair doubt but that they infringe, by doing what they claimed and exercised as their exclusive right, when they had the patent, and by practising the invention which the patent purports to cover.

Let a decree be entered for an injunction and an account, according to the prayer of the bill, with costs.

Charles N. Judson, for the plaintiffs.

J. C. Clayton, for the defendants.

RAFAEL DE FLOREZ AND ERNEST P. BERNARD

V8.

CHARLES T. RAYNOLDS AND OTHERS. IN EQUITY.

Re-issued letters patent were granted to Moritz Pinner, as assignee of Jean Bouvet, as inventor, November 1st, 1864, for 17 years from June 28th, 1864, for an improvement in metal cans for preserving food, the original patent having been granted to Pinner, June 28th, 1864, for 17 years from that day.

De Florez v. Raynolds.

In June, 1878, in this suit, brought for the infringement of said re-issue, an interlocutory decree was made, for an account of profits and a perpetual injunction. Afterwards, the defendants moved for leave to introduce in evidence, for the first time, a prior patent, granted in France, to Bouvet, for the same invention, and to amend the answer for that purpose, with a view to limit the duration of the plaintiffs' patent to the term of 17 years from the date of the French patent. The French patent consisted of (1) a patent, "taken" November 30th, 1861, for 15 years; (2) a certificate of addition, 'taken" December 21st, 1861; (3) another certificate of addition, "taken" November 27th, 1862. Under the French law, the 2 certificates of addition expired with the original French patent, namely, at the end of 15 years from November 30th, 1861, and the 2 certificates of addition had effect, as patents, respectively, from December 21st, 1861, and November 27th, 1862. The 2d certificate of addition, in connection with the original and the 1st certificate, patented the same invention covered by said re-issue: Held, that said re-issue was valid, for the purposes of said injunction, only for 17 years from November 27th, 1862, and that said motion ought to be granted. The French patent law of July 8th, 1844, examined and explained. The defendants held not to have been guilty of laches in not sooner making the motion, but the case not to be regarded as a precedent for the case of an application to set up a defence to defeat a patent for want of novelty.

The successive statutes of the United States as to the duration of patents, examined.

The effect of § 16 of the Act of March 2d, 1861, (12 U. S. Stat. at Large, 246,) providing that all patents thereafter granted should remain in force for the term of 17 years from the date of issue, and prohibiting all extension of such patents, was, to limit the duration of a United States' patent for an invention previously patented abroad to the same inventor, to the term of 17 years from the date when the foreign patent had effect, as a patent, in his favor.

(Before BLATCHFORD and WHEELER, JJ., Southern District of New York, Feb. ruary 2d, 1880.)

BLATCHFORD, J. The original letters patent, in this case, were granted to Moritz Pinner, as assignee of Jean Bouvet, of La Rochelle, France, on the invention of Bouvet, and on his application, as a subject of the Empire of France, for an "improvement in metal cans, cases, boxes, &c., for preserving food, gunpowder, liquors, fruits, oils and other articles." The date of the patent was June 28th, 1864, and, on its face, it was granted for the term of 17 years from the 28th day of June, 1864. The patent was re-issued to Pinner, November 1st, 1864, the re-issue being granted, on its face, for the term of 17 years from the 28th day of June, 1864. This suit is