Hartshorn v. Day - 60 U.S. 211 (1856)
U.S. Supreme Court
Hartshorn v. Day, 60 U.S. 19 How. 211 211 (1856)
Hartshorn v. Day
60 U.S. (19 How.) 211
Where a patentee is about to apply for a renewal of his patent, and agrees with another person that in case of success he will assign to him the renewed patent, and the patent is renewed, such an agreement is valid, and conveys to the assignee an equitable title, which can be converted into a legal title by paying or offering to pay the stipulated consideration.
An agreement between Chaffee, the patentee, and Judson, after the renewal, reciting that the latter had stipulated to pay the expenses of the renewal, and make an allowance to the patentee of $1,200 a year, during the renewed term, and then declaring:
"Now I (Chaffee) do hereby, in consideration of the premises, and to place my patent so that in case of my death or other accident or event, it may enure to the benefit of Charles Goodyear and those who hold a right to the use of said patent under and in connection with his licensees &c., nominate, constitute, and appoint said William Judson my trustee and attorney irrevocable, to hold said patent and have the control thereof so as none shall have a license to use said patent or invention &c. other than those who had a right when said patent was extended without the written consent of said Judson &c.,"
passed the entire ownership in the patent, legal and equitable, to Judson for the benefit of Goodyear and those holding rights under him.
If this annuity was not regularly paid, the original patentee had no right to revoke the power of attorney and assign the patent to another party. His right to the annuity rested in covenant, for a breach of which he had an adequate remedy at law.
Evidence tending to show that the agreement between the patentee and the attorney had been produced by the fraudulent representations of the latter in respect to transactions out of which the agreement arose ought not to have been received, it being a sealed instrument.
In a court of law, between parties or privies, evidence of fraud is admissible only where it goes to the question whether or not the instrument ever had any legal existence. But it was especially proper to exclude it in this case, where the agreement had been partly executed and rights of long standing had grown up under it.
This was an action brought by Day against Hartshorn and Hayward for the violation of a patent for the preparation and application of India rubber to cloths, granted to E. M. Chaffee in 1836 and renewed for seven years in 1850. Day claimed under an assignment of this patent from Chaffee on the 1st of July, 1853. The defenses taken by Hartshorn and Hayward are stated in the opinion of the Court, in which there is also a succinct narrative of the whole case.
The defendants below first pleaded four special pleas, which were overruled upon demurrer. They then gave notice of eleven defenses assailing the validity of the patent. The record was very voluminous, being upwards of a thousand printed pages. One hundred and thirty-five exceptions were taken during the progress of the trial, which lasted for six weeks. After the testimony was closed, the counsel for the defendants offered seventy-four propositions to the court by way of instruction to the jury, and six supplemental ones with regard to the fraud alleged to have been practiced upon Chaffee by Judson. The court then charged the jury as contained in fifteen printed pages of the record, and the case came up to this Court upon the following exception:
The court refused to instruct the jury as requested by the defendant's counsel except so far as the propositions presented by them were adopted or approved in the charge as made, and refused to charge otherwise than as the jury had been instructed. The defendant's counsel excepted to such refusals, respectively, and also to the refusal of said court as to each of said requests. They also excepted to each instruction given by the court contrary to such requests, or either of them.
All this vast mass of matter was open to argument in this Court.