The monopoly granted by law to a patentee is for one entire
thing, and in order to enable an assignee to sue for an
infringement, the assignment must convey to him the entire and
unqualified monopoly which the patentee holds in the territory
specified.
A conveyance by a patentee of all his right, title, and interest
in and to the letters patent on velocipedes granted to him, so far
as said patent relates to or covers the adjustable hammock seat or
saddle, is a mere license.
Claim 1 in letters patent No. 314,142, issued to Thomas J.
Kirkpatrick March 17, 1885, for a bicycle saddle, when construed
with reference to the previous state of the art, is not infringed
by the defendants' saddle.
This was a bill in equity for the infringement of two letters
patent, namely, No. 216,231, issued to John Shire, June 3, 1879,
for an improvement in velocipedes; and, second, patent No. 314,
142, issued March 17, 1885, to Thomas J. Kirkpatrick, for a bicycle
saddle.
Both patents were contested by the defendants upon the grounds
of their invalidity and noninfringement, and in addition thereto it
was insisted that plaintiff had no title to the
Page 144 U. S. 249
Shire patent. Upon the hearing in the court below, the bill was
dismissed, and plaintiff appealed to this Court. 34 F. 893.
MR. JUSTICE BROWN, after stating the facts in the foregoing
language, delivered the opinion of the Court.
There are two patents involved in this case, both of which
relate to what is known as hammock saddles for bicycles.
(1) The second claim of the Shire patent, No. 216,231, which is
the only one alleged to be infringed, and the only one to which the
plaintiff appears to have the title, is as follows:
"2. In a velocipede, an adjustable hammock seat, J,
substantially as set forth."
Plaintiff derives its title to this patent by assignment from
Thomas Kirkpatrick, who himself claimed title to it from Shire, the
patentee, under the following instrument:
"Be it known that I, John Shire, of Detroit, Wayne County,
Michigan, for and in consideration of one dollar and other valuable
considerations to me paid, do hereby sell and assign to Thomas J.
Kirkpatrick, of Springfield, Clark County, Ohio, all my right,
title, and interest in and to the letters patent on velocipedes
granted to me June 3, 1879, and No. 216,231, including all rights
for past infringement so far as said patent relates to or covers
the adjustable hammock seat or saddle, except the right to use said
seat or saddle in connection with the velocipede made by me under
said patent, in my business at Detroit."
"Signed and delivered at Detroit, this 10th day of July,
1884."
"JOHN SHIRE"
"Witness: J. M. EMERSON "
Page 144 U. S. 250
The instrument should evidently be read as though there were a
comma after the word "infringement," as the following words are
evidently intended as a limitation upon the prior granting clause.
It is then only so far as this patent "relates to or covers the
adjustable hammock seat or saddle" that the patentee conveys his
right to the same to Kirkpatrick. The right to the same to
Kirkpatrick. The not only the adjustable hammock seat mentioned in
the second claim, but three combinations set forth in other claims,
of which the hammock seat is an element in only one.
Did this instrument, then, vest in Kirkpatrick the legal title
to that element in the patent embodied in the second claim, or was
this a mere license, giving him a right to make, use, and sell the
device in this claim, but not vesting in him the legal title, or
enabling him to sue thereon in his own name, nor to convey such
right to the plaintiff? It really involves the question, which is
one of considerable importance, whether a patentee can split up his
patent into as many different parts as there are claims, and vest
the legal title to those claims in as many different persons. This
question has never before been squarely presented to this Court,
but in view of our prior adjudications, it presents no great
difficulty. The leading case upon this subject is that of
Gayler v.
Wilder, 10 How. 477,
51 U. S. 494,
wherein it was held that the grant of an exclusive right to make
and vend an article within a certain territory, upon paying to the
assignor a cent per pound, reserving to the assignor the right to
use and manufacture the article by paying to the assignee a cent
per pound, was only a license, and that a suit for the infringement
of the patent right must be brought in the name of the assignor.
While that, of course, was a different question from the one
involved in this case, the trend of the entire opinion is to the
effect that the monopoly granted by law to the patentee is for one
entire thing, and that in order to enable the assignee to sue, the
assignment must convey to him the entire and unqualified monopoly
which the patentee held, in the territory specified, and that any
assignment short of that is a mere license. "For," said Chief
Justice Taney,
"it was obviously not the intention of the legislature
Page 144 U. S. 251
to permit several monopolies to be made out of one, and divided
among different persons within the same limits. Such a division
would inevitably lead to fraudulent impositions upon persons who
desired to purchase the use of the improvement, and would subject a
party who, under a mistake as to his rights, used the invention
without authority, to be harassed by a multiplicity of suits
instead of one, and to successive recoveries of damages by
different persons holding different portions of the patent right in
the same place. Unquestionably a contract for the purchase of any
portion of the patent right may be good as between the parties as a
license, and enforced as such in the courts of justice. But the
legal right in the monopoly remains in the patentee, and he alone
can maintain an action against a third party who commits an
infringement upon it."
As the assignment was neither of an undivided interest in the
whole patent, nor of an exclusive right within a certain territory,
it was held to be a mere license.
In
Waterman v. Mackenzie, 138 U.
S. 252, an agreement by which the owner of a patent
granted to another "the sole and exclusive right and license to
manufacture and sell" a patented article throughout the United
States, not expressly authorizing him to use it, was held not to be
an assignment, but a license, and to give the licensee no right to
sue in his own name. The language used by the Court in this case
was a reaffirmance of that employed by Chief Justice Taney in
Gayler v. Wilder to the effect that the monopoly granted
by the patent laws is one entire thing, and cannot be divided into
parts, except as authorized by those laws, and that the right of
the patentee to assign his monopoly was limited, either, first, to
the whole patent, comprising the exclusive right to make, use, and
vend the invention throughout the United States, or second to an
undivided part or share of that exclusive right, or third, to the
exclusive right under the patent within and throughout a specified
territory. Rev.Stat. 4898. "A transfer," said the Court,
"of either of these three kinds of interests, is an assignment,
properly speaking, and vests in the assignee a title in so
Page 144 U. S. 252
much of the patent itself, with a right to sue infringers; in
the second case, jointly with the assignor; in the first and third
cases, in the name of the assignee alone. Any assignment or
transfer short of one of these is a mere license, giving the
licensee no title in the patent and no right to sue at law in his
own name for an infringement."
We see no reason to qualify in any way the language of these
opinions. While it is sometimes said that each claim of a patent is
a separate patent, it is true only to a limited extent. Doubtless
separate defenses may be interposed to different claims, and some
may be held to be good and others bad, but it might lead to very
great confusion to permit a patentee to split up his title within
the same territory into as many different parts as there are
claims. If he could do this, his assignees would have the same
right they now have to assign the title to certain territory, and
the legal title to the patent might thus be distributed among a
hundred persons at the same time. Such a division of the legal
title would also be provocative of litigation among the assignees
themselves as to the exact boundaries of their respective titles.
We think the so-called assignment to Kirkpatrick was a mere
license, and did not vest in him or his assigns the legal title to
the second claim, nor the right to sue in his own name upon it.
This disposition of the assignment renders it unnecessary to
discuss the validity of the patent.
(2) Patent No. 314, 142, to Thomas J. Kirkpatrick, issued March
17, 1885, contains four claims, the first one of which is relied
upon to sustain this bill. This claim is as follows:
"1. The combination, with the perch or backbone of a bicycle or
similar vehicle, of independent front and rear springs secured to
said perch or backbone, and a flexible seat suspended directly from
said springs at the front and rear, respectively, substantially as
set forth."
"My invention," says the patentee in his specification,
"consists in a peculiar arrangement of front and rear springs
secured independently to the reach or 'backbone' of the machine in
connection with the flexible seat suspended at the front and rear
from said springs. . . . These springs, D
Page 144 U. S. 253
and E, are secured independently to the perch or backbone, A,
each spring being preferably secured as nearly as practicable under
the end of the saddle to which said spring is attached. . . . In
order to extend the suspended flexible seat as far forward as
possible, and at the same time secure the full elasticity of the
forward spring, D, I construct the said spring with two wings,
b1 b2, adapted to extend forward of the head, B, and turn
upward and backward to connect with the forward end of the seat,
C."
If this claim be extended, as is insisted by the appellant, to
include every device by which a flexible seat is suspended upon the
perch or backbone of a bicycle by independent springs at the front
and rear ends of such seat, it is anticipated by several patents
put in evidence by the defendants. Thus, in the Fowler patent of
1880, a saddle seat is shown to be suspended above the perch or
backbone upon a coil spring in front and with a grooved leaf spring
in the rear, these springs being entirely independent of each
other. In the Fowler patent of 1881, there is exhibited a saddle
seat suspended from the backbone by independent front and rear
springs, though there may be some doubt whether the seat in either
of these cases is flexible. There is no doubt, however, that in the
Veeder patent of 1882 there is a flexible saddle seat carried upon
the perch or backbone of a bicycle, and resting upon two part of
the same springs, which, however, cannot be said to be entirely
independent of each other. Evidently, however, the feature of
flexibility cuts no figure in this case, since it would manifestly
require no invention to adapt the Fowler saddles to a flexible
seat.
In view of these patents, the Kirkpatrick patent cannot be
sustained for the combination indicated without the qualification,
"substantially as set forth," at the end of the claim, which limits
it to a forward spring adapted to extend forward of the head and
turn upward and backward to connect with the forward end of the
seat, the effect of this being to throw the seat as far forward as
possible and to render unnecessary any intervening mechanism or
device between the forward end of the saddle and the perch.
Page 144 U. S. 254
Limited in this way, it is clear the defendants do not infringe,
making use as they do of springs which are not only quite different
from the Kirkpatrick springs in their design, but omit the
important particular of projecting in front of the steering
post.
There was no error in the action of the court below, and its
decree is therefore
Affirmed.