Bloomer v. Millinger,
68 U.S. 340 (1863)

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U.S. Supreme Court

Bloomer v. Millinger, 68 U.S. 1 Wall. 340 340 (1863)

Bloomer v. Millinger

68 U.S. (1 Wall.) 340


1. A grant of a right by a patentee to make and use and vend to others to be used a patented machine within a term for which it has been granted will give the purchaser of machines from such grantee the right to use the machine patented as long as the machine itself lasts, nor will this right to use a machine cease because an extension of the patent, not provided for when the patentee made his grant, has since been allowed and the machine sold has lasted and is used by the purchaser within the term of time covered by this extension, the rule being distinguishable from that applied to the assignee of the right to make and vend the thing patented, who holds a portion of the franchise which the patent confers and whose right of course terminates with the term of the patent unless there is a stipulation to the contrary.

2. Bloomer v. McQuewan, 14 How. 589, and Chafee v. Boston Belting Co., 22 How. 217, approved.

3. How far parol proof may be introduced to show verbal agreements of the parties at the time when deeds were executed, and so to prove mistake or fraud in not executing what it was understood should be executed. The question raised on argument but not decided by the Court.

Bloomer, the appellant here, filed a bill in equity in the Circuit Court for the Western District of Pennsylvania. He set forth in it that he was owner of the exclusive right to make and use and vend to others to be used within the County of Alleghany, in Pennsylvania, the patented planing machine of Woodworth; that subsequently to the 27th December, 1849, and about the 1st January, 1850, the respondent, Millinger, had put in operation in that county three of these machines, and was continuing to use them without any lawful

Page 68 U. S. 341

authority. The prayer was for an account and for an injunction against the use of these three machines.

The case, as appearing by the bill and answer, was thus:

On the 27th December, 1828, letters patent were granted to Woodworth for an improved planing machine for fourteen years -- that is to say, up to 27th\\ December, 1842.

On the 16th November, 1842 (Woodworth himself being dead, but his estate being represented by an administrator), an extension of the patent was granted by the Commissioner or Board of Commissioner of Patents for the term of seven years from the expiration of the original patent -- that is to say, from the 27th December, 1842, to the 27th of December, 1849.

On the 2d June, 1843, the administrator of Woodworth, by deed (called, in the argument, Exhibit A), reciting "the extension of said letters patent for the term of seven years from and after the expiration of said patent," sold and conveyed to one William Lippincott, his heirs and assigns, the right to construct and use, and vend to others to construct and use, "during the said extension," the patented machine, within the County of Alleghany, in the state of Pennsylvania; covenanting that such right should be exclusive throughout the limits specified, during the "term aforesaid."

On the 26th February, 1845, Congress, by act, granted an extension of the patent for the term of seven years from the expiration of the extension granted by the commissioner, and on the 14th of March following, the administrator sold and conveyed his interest in the "letters patent and the franchises thereby granted and secured," for "the said term of seven years created and extended by Congress," to one Wilson; a second deed -- not specially important in the case, but to the same effect exactly -- that is to say, for the term of seven years created and extended by the said act of Congress -- being made July 9, 1845, and after the patent had been surrendered for a defective specification.

Wilson was thus invested with the interest under the second or Congressional extension, but with nothing more.

In this state of things, William Lippincott, still holding his right under the deed of 2 June, 1843 (called Exhibit A), for

Page 68 U. S. 342

Alleghany County, under the extension granted by the commissioner, conveyed it, on the 10th April, 1846, to James Lippincott and one Millinger, the present defendant, and by a second instrument (called Exhibit B), dated three days afterwards (13th April, 1846), the administrator, reciting that in consequence of the surrender and renewal of the patent, doubts had arisen as to rights given by instruments executed prior to the reissue, licensed and empowered this same Lippincott and Millinger

"to construct and use exclusively the patented machine in the County of Alleghany, . . . and also within said territory to license and empower any other person or persons to construct and use machines for the term of time for which the patent was extended by the Board of Commissioners hereinbefore referred to; being for the term of seven years and no longer from and after the expiration of the original term of fourteen years."

The deed declared that the administrator intended thereby "to confirm . . . all right, title, and interest to construct and use, and the right to license others to construct and use said machines," which had been granted by the indenture of 2d June, 1843 (Exhibit A), and concludes thus:

"No other, or greater, or other, or further grant or conveyance is hereby made &c. than was granted by the indenture aforesaid, and upon the same terms and conditions."

Lippincott and Millinger were thus vested with the right for Alleghany County under the commissioner's extension, in such way as given by the deeds already mentioned.

On the 24th June, 1847, the administrator granted to Bloomer (the complainant) his "full consent, permission, and license to construct and use, and vend to others to construct and use," the patented invention "during the two extensions" within that part of Pennsylvania west of the Alleghany Mountains, "excepting Alleghany County, for the first extension," this "first extension" being that which had been previously granted to Lippincott and Millinger, the respondent in this suit. And on the 2d September, 1847, this same Lippincott and Millinger, by endorsement upon the administrator's deed of 13 April, 1846, conveying it to them, conveyed

Page 68 U. S. 343

to him, Bloomer aforesaid, whatever rights in the patent they held; Bloomer, however, stipulating that he would in no way interfere with certain machines mentioned in the transfer as belonging &c., one to A., and one to B. &c.,

"nor interfere in any manner with the use of the three machines now erected, and in operation and use by the said Millinger; but the right, title, and use of the machines of the persons hereinbefore named, shall remain and be in them or their assigns for and during the time limited by the written instruments."

In addition to this deed endorsed -- from Lippincott and Millinger to Bloomer, of 2d September, 1847 -- these same parties, Lippincott and Millinger, executed on the 10th January, 1848, still another deed to Bloomer by which they assigned to him

"all their right, title, and interest in and to the said planing patents . . . within said County of Alleghany, as fully as the same is vested in us by force of the several hereinbefore recited conveyances, * and giving to the said Bloomer and his assigns full power and authority to construct and use, and vend to others to construct and use, said patent as aforesaid, within said county . . . for and during the full end and term of time unexpired and yet to come of said extension of said patent, to-wit, until the 27th day of December, 1849."

And on the same day, Bloomer, the complainant, executed a deed giving to Millinger, the respondent,

"his full consent, and permission, and license to construct and use, and vend to others to construct and use, during the first extension herein set forth, to-wit, from the 27th day of December, 1842, until the 27th day of December, 1849, the right to use the said renewed patent, and to vend to others to use three planing machines upon the principle, plan, and description of the said renewed patent and amended specifications, within the County of Alleghany."

How far Millinger had accepted this deed was not so plain.

Page 68 U. S. 344

In addition to the defense, as already indicated, from the pleadings, Millinger, the respondent, by his answer, averred and offered to prove that when the reassignment of 10th January, 1848, from Lippincott and himself to Bloomer was executed, Bloomer agreed that he would execute to Millinger "a deed of assignment of the right to the said extension, so far as regarded the three machines," and "the said deed of assignment from the said Bloomer" -- Millinger's answer went on to say --

"was to be executed by the two parties, and was to be so worded as that respondent should have all the rights and privileges, and was to stand precisely in the position as to the rights, enjoyments, and privileges, as respected the patent right to said three machines, as if the assignment from respondent and Lippincott had never been made, and so as to place the respondent in the same situation as he would have stood under the assignment of the 2d of June, 1843, or by any other agreement between the parties, and to all the benefit of any renewals to which respondent would have been entitled under the assignment of said extension by the Commissioner of Patents, on the 2d of June, 1843, or any other agreement between the parties;"

that the plaintiff, in fulfillment of the verbal agreement, did execute a deed, left it at the place of business of the respondent, and that he refused to accept or sign the same, because it did not carry out the alleged agreement.

Some parol evidence was taken on behalf of the respondent to substantiate these allegations. But the complainant's general right, and the use of the three machines by the respondent, Millinger, after the expiration of the term of extension granted by the commissioner, was not denied.

The court below dismissed the bill, and on appeal here, two principal questions -- in substance these -- were made:

1. Whether, under the deeds of June 23, 1843 (Exhibit A), conveying to the assignor of Millinger, in such strict terms, a right to the extension of the patent for but seven years, and the deeds of 10 and 13 April, 1846 (Exhibit B), by which this right was conveyed, in such like terms, to Millinger -- taken in connection with Bloomer's stipulation

Page 68 U. S. 345

of 13 April, 1846, and his deed of 10 January, 1848, that Millinger should use his three machines during the said term for which the patent had been extended by the commissioner -- Millinger could use his machines after the expiration of that term, and during the new term for which an extension had been granted by Congress.

2. If he could not do so under the deeds as set forth in the pleadings, he could introduce parol evidence to show what he alleged in his answer and offered to prove as to the license intended to have been executed by Bloomer on the 10th January, 1848.

Page 68 U. S. 348

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