Where a patentee, whose patent bad been extended according to
law, conveyed all his interest to another person, and the assignee
brought suit against certain parties for an infringement of the
patent, and these parties claimed under a license granted by the
original patentee before the assignment, it was necessary to show a
connected chain of title to themselves in order to justify their
use of the improvements secured by the patent.
Having omitted to do this, the judgment of the court below,
which was in favor of the defendants, must be reversed and the case
remanded for another trial. Whether the patent was for a process or
a machine is not decided in the present case.
This was an action of trespass on the case brought by Chaffee
against the Boston Belting Company for an infringement upon a
patent granted for the manufacture of India rubber granted to
Chaffee in 1836 and extended for seven years from the 31st day of
August, 1850.
Page 63 U. S. 218
The respective claims of the plaintiff and defendants are fully
stated in the opinion of the Court.
The presiding judge in the court below ruled that the defendants
had a right to continue the same machinery for the same purposes,
and in conformity with the directions contained in the
specification, after the expiration and renewal of the letters
patent, and consequently that the plaintiff could not recover.
To this ruling the plaintiff excepted, and brought the case up
to this Court.
Page 63 U. S. 219
MR. JUSTICE CLIFFORD delivered the opinion of the Court.
This case comes before the court on a writ of error to the
Circuit Court of the United States for the District of
Massachusetts. It was an action of trespass on the case for the
alleged infringement of certain rights secured by letters
patent.
As the foundation of the suit, the declaration alleges, in
effect, that the assignor of the plaintiff was the original and
first inventor of certain improvements in the manufacture of India
rubber, and that in the year 1836 letters patent for such
improvements were duly issued to him by the commissioner of
Patents, as is therein fully and correctly set forth and de
scribed.
Those improvements, as is alleged in the declaration, consist in
a mode of preparing the rubber for manufacturing purposes and of
reducing it to a pasty state without the use of the spirits of
turpentine or other solvents, and of applying the same to cloths
and for other purposes by the use of heated rollers and other
means, as set forth in the letters patent, saving thereby, as is
alleged, a large portion of the expense of reducing the original
material to a proper degree of softness and of fitting and
preparing it for the various uses to which it may be applied.
On application subsequently made to the Commissioner of Patents,
in due form of law, by the original inventor, the patent was
extended for the further term of seven years from the thirty-first
day of August, 1850, and the plaintiff alleges that the patentee,
on the first day of July, 1853, transferred,
Page 63 U. S. 220
assigned, and conveyed to him all his title to the invention and
to the patent for the extended term.
By virtue of that deed of transfer, it is claimed in the
declaration that the plaintiff acquired the right to demand and
recover the damages for all infringements of the letters patent
prior to the date of the transfer, as well as for those that have
been committed since that time, and accordingly the plaintiff
alleges that the defendants, on the thirty-first day of August,
1850, fraudulently commenced the use of those improvements without
law or right, and so continued to use them to the day of the
commencement of this suit, averring at the same time that the
defendants have prepared large quantities of the native rubber for
manufacturing purposes without the use of spirits of turpentine or
other solvents, thereby making large gains and greatly to the
damage of the plaintiff.
As appears by the transcript, the action was entered in the
circuit court at the May term, 1854, but was continued from term to
term until the May term, 1857, when the parties went to trial upon
the general issue.
From what is stated in the bill of exceptions it appears that
one Charles Goodyear was the owner of the original letters patent
on the twenty-sixth day of January, 1846, and that he continued to
own them for the residue of the term for which they were originally
granted. On that day he entered into an indenture with one Henry
Edwards, of the City Boston, whereby, for certain considerations
therein expressed, he sold and conveyed to the said Henry Edwards,
his executors, administrators, and assigns, the exclusive right and
license to make, use, and vend any and all articles appertaining to
machines or in the manufacture, construction, and use of machines
or machinery of whatever description, subject to certain
limitations and qualifications therein expressed.
By the terms of the instrument, it was understood that the right
and license so conveyed was to apply to any and all articles
substituted for leather, metal, and other substances in the use or
manufacture of machines or machinery insofar as the grantor had any
rights or privileges in the same, by virtue of any invention or
improvement made or which should thereafter
Page 63 U. S. 221
be made by him in the manufacture of India rubber or gum-elastic
goods and in virtue of any and all letters patent or patent rights
of the United States granted or belonging to him or which should
thereafter be granted or belong to him for any and all inventions
or improvements in the manufacture of such goods in this country,
but excluding the right to make any contract with the government of
the United States. In consideration of the premises, the grantee
paid the sum of one thousand dollars, as appears by the recital of
the instrument, and agreed to pay a certain tariff at the rate of
five cents per superficial yard, or five cents per pound for the
pure gum, according to the nature of the article manufactured.
Reference is made in the declaration to the letters patent and
to the deed of assignment from the patentee to the plaintiff, but
neither of those instruments appears in the bill of exceptions or
in any other part of the record.
At the trial of the cause it was conceded and agreed that the
defendants, before the date of the plaintiff's writ, used certain
machinery, constructed in conformity with the specification annexed
to the letters patent declared on, and that the defendants, in
using the machinery, conformed to the directions contained in the
specification, and that the same was so used for the preparation
and application of India rubber to the manufacture of the articles
mentioned and described in the indenture from Charles Goodyear to
Henry Edwards, and that all the machinery so used was constructed
and in use as aforesaid before and at the time the original letters
patent expired.
Upon this state of the case, according to the bill of
exceptions, the presiding justice ruled and instructed the jury
that under their title, the defendants had the right to continue to
use the same machinery for the same purposes and in conformity with
the directions contained in the specification after the expiration
and renewal of the letters patent, and consequently that the
plaintiff could not recover.
Under the ruling and instruction of the court, the jury returned
their verdict for the defendants, and the plaintiff excepted to the
ruling, and his exceptions were duly allowed.
It is insisted by the counsel of the plaintiff that the
instruction
Page 63 U. S. 222
given to the jury was erroneous, and that is the only question
presented for decision at the present time. In considering that
question, our attention must necessarily be confined to the
evidence reported in the bill of exceptions as the only means of
ascertaining the precise state of facts on which the instruction to
the jury was given. Whether the report of the evidence, as set
forth in the bill of exceptions, may or may not be incomplete or
imperfectly stated, cannot be known in an appellate court. Bills of
exception, when properly taken and duly allowed, become a part of
the record, and as such cannot be contradicted.
By the admission of the parties in this case it appears that the
defendants, before the date of the plaintiff's writ, had used
certain machinery constructed in conformity with the specification
of the plaintiff's patent. In the absence of any explanation or
suggestion to the contrary, it must be inferred that the use of the
machinery so admitted was without the license or consent of the
plaintiff and subsequent to the period when he became the owner of
the patent for the extended term and if so, the admission was
sufficient under the pleadings to make out a
prima facie
case for the plaintiff. To maintain the issue on their part, the
defendants proved in effect, or it was admitted, that all the
machinery so used by them had been constructed and was in use as
aforesaid before and at the time the original letters patent
expired, and that in using the machinery they had conformed to the
directions contained in the specification, and that the same was so
used for the purposes and in the manufacture of the articles
specified and described in the before-mentioned indenture. As
before stated, they had previously proved, or it had been admitted,
that the owner of the original term of the patent had granted the
exclusive right and license to a third party to use the invention
for the same purposes for which the defendants, both under the
original and extended term of the patent, had used their machinery;
but they did not prove, and there is no evidence in the case to
show, any privity between themselves and that license, either by
assignment or in any other manner. They offered no proof tending to
show
Page 63 U. S. 223
that their use of the machinery in question, under either term
of the patent, was with the license, consent, or knowledge, of the
patentee, or of any other person who ever had or claimed to have
any power or authority under him to convey the right. Provision is
made by the eighteenth section of the act of Congress, passed on
the fourth day of July, 1836, for the extension of patents beyond
the time of their limitation, on application therefor in writing by
the patentee to the commissioner of the Patent Office setting forth
the grounds for such extension. By the latter clause of that
section, the benefit of such renewal is expressly extended to
assignees and grantees of the right to use the thing patented to
the extent of their respective interests therein. 5 Stat. 125.
Under that provision, it has been repeatedly held by this Court
that a party who had purchased a patented machine and was using it
during the original term for which the patent was granted might
continue to use the machine during the extended term.
Bloomer v.
McQuewan, 14 How. 549;
Wilson v.
Rosseau, 4 How. 646. That rule rests upon the
doctrine that the purchaser, in using the machine under such
circumstances, exercises no rights created by the act of Congress,
nor does he derive title to it by virtue of the franchise or the
exclusive privilege granted to the patentee.
When the patented machine rightfully passes to the hands of the
purchaser from the patentee or from any other person by him
authorized to convey it, the machine is no longer within the limits
of the monopoly. According to the decision of this Court in the
cases before mentioned, it then passes outside of the monopoly, and
is no longer under the peculiar protection granted to patented
rights. By a valid sale and purchase, the patented machine becomes
the private individual property of the purchaser and is no longer
protected by the laws of the United States, but by the laws of the
state in which it is situated. Hence it is obvious that if a person
legally acquires a title to that which is the subject of letters
patent, he may continue to use it until it is worn out, or he may
repair it or improve upon it, as he pleases in the same manner as
if dealing with property of any other kind. Applying
Page 63 U. S. 224
these principles to the present case as it is exhibited in the
bill of exceptions, there would be no difficulty in sustaining the
instructions given to the jury, provided it appeared that the
machinery used by the defendants had been legally purchased by them
of the patentee or his assigns during the original term of the
patent. But nothing appears in the evidence reported to warrant the
inference that they were either assignees or grantees of the thing
patented, within the meaning of the act of Congress or the
decisions of this Court. All that the indenture offered in evidence
showed was the nature and extent that the defendants had used the
invention, but, as is well contended by the counsel for the
plaintiff, it proved nothing more. It did not prove or tend to
prove that the defendants were rightfully in the enjoyment of the
thing patented during the original term of the patent, and having
failed to establish any right or license to use their machinery
during the extended term by any other proof, they appear in the
record as naked infringers.
Their right to continue to use the machinery as against the
plaintiff is predicated in the instruction upon the assumption that
they had a title to it, and were rightfully in the use of it under
that title, before and at the time the original letters patent
expired. That assumed fact finds no support in the evidence
reported. It is clearly error for the court, in its instruction to
the jury, to assume a material fact as proved, of which there is no
evidence in the case.
United States v.
Breitling, 20 How. 255. And when the finding of the
jury accords with the theory of the instruction, thus assumed
without evidence, the error is of a character to deserve
correction.
Another position is assumed by the counsel of the plaintiff,
which ought not to be passed over without a brief notice. They
contend that the invention of the plaintiff, as described in the
letters patent, is for a process, and not for a machine or
machinery, and that the act of Congress extending the benefit of
renewals to assignees and grantees of the right to use the thing
patented, when properly construed, does not include patents for a
process, but should be confined to patents for machines. That
question, if properly presented,
Page 63 U. S. 225
would involve the construction of the letters patent in this
case, as well as the act of Congress; but as the patent is not in
the record, it is not possible to determine it at the present time,
and we only advert to it that it may not appear to have escaped
attention.
The decree of the circuit court is reversed with costs and
with directions to issue a new venire.