Kennedy v. Hazelton
128 U.S. 667 (1888)

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U.S. Supreme Court

Kennedy v. Hazelton, 128 U.S. 667 (1888)

Kennedy v. Hazelton

No. 1081

Submitted December 3, 1888

Decided December 17, 1888

128 U.S. 667

Syllabus

Specific performance cannot be decreed of an agreement to convey property which has no existence, or to which the defendant has no title, and if the want of title was known to the plaintiff at the time of beginning the suit, the bill will not be retained for assessment of damages.

One who agrees to assign to another any patents that he may obtain for improvements in certain machines, and who afterwards invents such an improvement, and, with intent to evade his agreement and to defraud the other party, procures a patent for his invention to be obtained upon the application of a third person, and to be issued to him as assignee of that person, and receives profits under it, cannot be compelled in equity to assign the patent or to account for the profits.

Page 128 U. S. 668

This was a bill in equity for specific performance, filed November 12, 1887, by a citizen of New York against a citizen of Illinois, and contained the following allegations:

On July 10, 1884, the defendant, in consideration of the sum of $10,000 paid by the plaintiff to him, made an assignment to the plaintiff of an interest of one-half in two patents previously obtained by the defendant for steam boilers, and also made a written contract, acknowledged before a notary public and recorded in the Patent Office, by which the defendant agreed to assign to the plaintiff any and all patents which the defendant might thereafter obtain from the United States or the Dominion of Canada for inventions in improvements in steam boilers, and further agreed not to assign such inventions, or the patents obtained therefor, to any other person. In 1885, the defendant publicly stated that he had invented such an improvement, and explained its general plan and construction, and afterwards combined and confederated with one Goulding to avoid and evade the effect of the contract of July 10, 1884, and for that purpose the defendant caused to be prepared at his expense, but in the name of Goulding, the necessary papers to procure letters patent for this invention, and Goulding, without any consideration received from the defendant therefor, assented to be used in that regard as the alleged inventor of the improvement, and at the request and by the procurement of the defendant, filed an application under oath for a patent for it, which application was allowed, and Goulding, before the issue of the patent, assigned in writing to the defendant all his interest in the improvement and in the patent therefor, and on December 14, 1886, a patent was issued to the defendant accordingly, as assignee of Goulding, a certified copy of which was made part of the bill. The bill further alleged that the defendant was, and Goulding was not, the original and first inventor of the improvement so patented; that the defendant had engaged in the manufacture and sale of boilers under this patent, and had received, and was receiving, great benefits therefrom; that the patent was of value exceeding the sum of $5,000, exclusive of interest and costs.

Page 128 U. S. 669

The bill prayed for a decree that the defendant assign this patent to the plaintiff, for an adjudication that the title to it equitably vested in the plaintiff at the date of its issue, for an account of profits received by the defendant from its use, for a preliminary injunction against transferring or encumbering the patent or manufacturing or selling boilers containing the improvement described therein, and for further relief.

The defendant demurred to the bill (1) for want of equity; (2) for multifariousness in embracing two separate and distinct causes of action, one to enforce specific performance of a contract, the other for the infringement of a patent; (3) because, as appeared by the allegations of the bill, the patent was absolutely void, and no suit could be maintained, either to compel its transfer or for infringement thereof.

The circuit court sustained the demurrer for the third reason, and dismissed the bill. 33 F. 293. The plaintiff appealed to this Court.

Page 128 U. S. 671

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