1. A declaration that a certain improvement, containing in
reality one principal and three distinct minor improvements, was
patented on a day named is supported by evidence that four patents
-- reissues -- were subsequently granted on an original patent of
the date named, such original having, in its specification,
described all and no more than the improvements specified in the
four reissues. The reissues relate back.
2. Where the purchaser of a claim for a patent agrees that as
soon as the patent is issued he will give his notes, payable at a
future date, the fact that no patent has issued until
after the day when the last note, if given, would have
been payable is no defense to
assumpsit for not having
given the notes, the patent having finally issued in form.
Read & Whitaker were inventors of four improvements in
reaping and mowing machines, the principal one being what was
called a "tubular finger bar," and in 1856 were in partnership,
under the name of Lloyd, Whitaker & Co., with two persons named
Lloyd & Bowman, these last-named persons using the improvements
with them, though not in any way inventors. On 27th December, 1856,
Read & Whitaker applied for a patent, their application giving
authority to Mr. Hanna, of Washington, whom they appointed their
solicitor,
"to alter or modify the drawings, specifications, and claims
thereunto attached in such manner as circumstances might require or
to withdraw the application altogether should it be deemed
advisable, and in that event to receive and receipt for such sums
of money as should be returnable under the act of Congress in that
case made and provided."
Pending this application and before any letters were granted,
Read agreed to sell out his interest to Whitaker for $4,500, of
which $1,500 was to be paid and was paid in cash. The instrument of
sale recited that
"Whereas Read & Whitaker have invented
an
improvement, for which they have
applied for letters
patent, and whereas Whitaker has agreed to purchase of Read
his interest in and to
said invention in consequence of
letters patent granted or to be granted, now therefore I, the said
Read, in consideration &c., hereby assign &c., to Whitaker,
the full and exclusive
Page 69 U. S. 592
right to said invention,
as set forth and described in the
specifications which I, in company with Whitaker, have prepared,
executed, and filed with the Commissioner of Patents at
Washington, preparatory to obtaining letters patent therefor. To
have and to hold,"
&c. Then, in a separate paragraph, the assignment proceeds,
for the same consideration ($4,500),
and the further
consideration of one dollar, to assign to Whitaker Read's
right, title, and interest in and to three claims to inventions
made by Read & Whitaker, for which
the specifications had
not been fully made, describing them.
The specifications above referred to contained a description of
all the improvements in the case, which were plainly but parts of
one invention.
Contemporaneously with this assignment, Whitaker, as one party,
and "Bowman & Lloyd" signing as another, executed an engagement
to Read for $3,000, the balance of the consideration of the
transfer from Whitaker to him. The contract, in opening, recites,
that Read had assigned to
Whitaker all his title in
certain
inventions and improvements (both plural) made by
Read & Whitaker, in improvement of grain reapers and grass
mowers &c. (for full particulars reference being made to said
assignment),
"for which the said
Whitaker has agreed to pay the said
Read as follows: $1,500 on the 1st January, A.D. 1859, and $1,500
on the 1st January, A.D. 1860, with interest."
And the contract then thus concludes:
"Now therefore, we, the said
J. Lloyd, F. H. Bowman, and J.
T. Whitaker, do hereby agree, for a valuable consideration to
us paid by the said Read (the receipt whereof we do hereby
acknowledge),
as soon as the patent for the improvement in the
grain reaper and grass mower aforesaid is obtained by the said Read
and Whitaker, to execute unto the said Read our joint and
several notes for the said amounts, payable as aforesaid, with
interest as aforesaid."
The dates when the notes were to come due must be observed.
After this time, Read retired from business, the
Page 69 U. S. 593
three other persons continuing it, and using all four
improvements.
The "specifications" referred to in Read's assignment, as filed
by him and Whitaker with the Commissioner of Patents, presented in
reality
four improvements. Mr. Hanna, their solicitor,
withdrew three of the claims, and on the 11th of August, 1857,
accepted a patent for
one of them only, as specified in a
specification amended by him; the patent embracing all the
improvements in its specification, but the claim being restricted
to the principal improvement, that of the "tubular finger bar." On
the 12th of February, 1859 -- this date, too, must be noted --
"Bowman & Lloyd," who now ceased to use any of the
improvements, notified to Read that as more than a sufficient time
had elapsed for procuring the paten
t for
improvemen
ts, and as the same had not been procured, they
(Bowman & Lloyd) considered themselves discharged, and the
contract void so far as
they were concerned. About one
year after this notice, that is to say, on the 7th February, 1860,
Read did obtain
four patents --
reissues upon the
patent of August 11, 1857, which reissued patents, it was admitted,
did contain the said four improvements, being all the improvements
in the matter.
Read accordingly brought assumpsit against Whitaker, Bowman
& Lloyd, for breach of contract in not executing their two
notes for $1,500 each, the declaration alleging that subsequently
to making the agreement, "to-wit, on the
11th day of August,
1857, the said improvement was duly patented," nothing being
said about any surrender or about the reissues and the one patent
of August 11, 1857, being alone offered in proof.
The question below was whether this declaration was sustained by
the evidence and whether Lloyd & Bowman were discharged. The
court held the declaration sufficient on the reissued patents being
granted, that both Bowman & Lloyd were bound, just as Read was,
that Bowman & Lloyd were chargeable with notice of Mr. Hanna's
authority and were bound by such changes and modifications as he
made. Verdict was given for the amount of the notes with
interest.
Page 69 U. S. 594
Judgment having gone accordingly, the defendants brought the
case here on error.
Page 69 U. S. 598
MR. JUSTICE CLIFFORD delivered the opinion of the Court.
This is a writ of error to the Circuit Court of the United
States for the Northern District of Illinois. The principal
question in the case arises upon the exceptions of the defendants
to the instructions given by the court to the jury.
Page 69 U. S. 599
Other exceptions were taken by the defendants to the rulings of
the court and to the refusal of the court to instruct the jury as
requested, but the whole substance of the controversy between the
parties and of the errors assigned in the record is involved in the
exceptions to the instructions of the court. Defendant in error and
the first-named plaintiff were inventors of a certain improvement
in reaping and mowing machines, and were joint owners of the
improvement. They applied to the Patent Office for letters patent,
and employed a patent solicitor to prosecute their claim before the
commissioner. Application was filed on the eighteenth day of May,
1857, and it is conceded that the specifications accompanying the
same contained a description of the entire improvement. Pending the
application and before the letters patent were granted, Whitaker,
the principal defendant in the court below, agreed with his
associate inventor to purchase of him, for the sum of four thousand
five hundred dollars, all the right, title, and interest which the
latter had or might have in and to the invention in consequence of
the letters patent granted or to be granted therefor, and in
consideration of that sum, the plaintiff in the court below, who
was the other inventor, assigned and set over to the party first
named the full and exclusive right to all of the invention as set
forth and described in the specifications, and the contract was
that the assignee should have and hold the invention to him and his
assigns as fully as the same would have been enjoyed by the
assignor if the assignment and sale had not been made. Introductory
part of the instrument described the invention as an improvement in
reaping and mowing machines for which the inventors had applied for
letters patent. Assignor also, by the same instrument, "in
consideration aforesaid, and also of one dollar" to him paid,
assigned and set over to the same assignee, all right, title, and
interest in and to three certain claims to inventions, described as
made by the same inventors, and for which the specifications had
not been fully prepared. Suit was brought in this case by the
assignor in that instrument to recover the sum of three thousand
dollars
Page 69 U. S. 600
as the unpaid balance of the consideration for the title and
interest of the invention as conveyed.
Declaration was an assumpsit, and was founded upon a
contemporaneous written agreement, signed by the assignee in that
assignment and the other two defendants. Agreement declared on
refers to the instrument of assignment, describes the subject
matter assigned as improvements "to grain reapers and grass mowers,
belt tightener," &c., specifies the entire consideration,
states that the balance unpaid is three thousand dollars and that
the same is to be paid in two annual installments with interest at
ten percent per annum, and concludes with what is the material
clause in the controversy. Substance of the clause is that the
defendants agreed to execute to the assignor of the invention their
joint and several notes "for said amounts, payable as aforesaid,
with interest, as aforesaid" as soon as the patent for the
improvement in the grain reaper and grass mower aforesaid is
obtained by the said inventors. Material allegations of the
declaration are, that the letters patent described in the agreement
were, on the eleventh day of August, 1857, duly obtained, and that
the defendants, after due notice thereof, neglected and refused to
give to the plaintiff their joint and several notes as they had
agreed to do. Plea was
non assumpsit, and the verdict and
judgment were for the plaintiff.
I. Principal defense is that by the true construction of the
agreement, no right of action against the last two defendants was
to accrue to the plaintiff unless letters patent for all the
improvements specified in the assignment were obtained within a
reasonable time, and that inasmuch as the patent of the eleventh of
August, 1857, was for one only of the four specified improvements,
the plaintiff, as against those defendants, is not entitled to
recover. Reference must be made to the circumstances under which
the contract was made as affording the means of applying the
language employed in the instrument to the subject matter of the
agreement. Parties agreed that there were four improvements, but
they all related to grain reapers and grass mowers, as
Page 69 U. S. 601
the machines are called in the written contract. Specifications
of the patent of the eleventh of August, 1857, embraced all of the
improvements described in the assignment, but the claim of the
patent limited the invention to the tubular finger bar, therein
described, which is by far the most important feature of the entire
improvement, and really constitutes the principal merit of the
invention. Description of the improvement in the assignment is that
it is an improvement in reaping and mowing machines, and there can
be do doubt that it was regarded by the parties as constituting the
principal matter of the assignment and transfer. But the other
improvements are embraced in the assignment, and cannot be
separated from the consideration specified in the instrument. Two
of the claims are described as the subjects of one application, and
the other as an invention for a belt "tightener" operated by a
right and left-hand screw. They were four in all, and in point of
fact were all described in the original specification, and are the
same as those described in the reissued patents set forth in the
record.
First one, as before stated, consists of an improvement in the
construction of the finger bar in reaping and mowing machines,
substituting a rolled tubular finger bar in the place of the solid
bar previously used.
Second one consists of an improvement in the arrangement and
combination of the raker's seat with a supporting wheel, and the
frame and finger bar of the machine.
Third one consists of an improvement in the mode of mounting the
driving wheel, and of driving the pulley that communicates motion
to the belt and reel pulley.
Fourth one consists of an improvement for tightening the belt
which draws the reel for the purpose of gathering the grain into
the sickle.
Obviously the improvements are but parts of the same invention,
and the evidence shows that the parties to the assignment had
invented them all before the date of that instrument. Precise date
of the invention does not appear, but it does appear that all of
the parties to the written agreement
Page 69 U. S. 602
were partners in 1856, and that the partnership used the
improvement in the manufacture of machines. When the plaintiff
assigned his interest in the invention to the first named
defendant, he retired from the firm and the other partners
continued the business, using all four of the improvements. Express
reference is made, both in the assignment and in the agreement, to
the pendency of the application for a patent in respect to the
principal improvement, and in the latter both to the pending
specifications and to those which were "not fully made." Such
reference to the specifications and pending proceedings render it
allowable to examine those documents in connection with the
assignment and agreement as means of ascertaining the true intent
and meaning of the parties.
Pending application for the patent was dated the 27th day of
December, 1856, and was signed by both of the inventors. Authority
was therein conferred upon their solicitor to alter or modify the
drawings, specifications, and claims thereunto attached in such
manner as circumstances might require, or to withdraw the
application altogether should it be deemed advisable, and in that
event to receive and receipt for such sums of money as should be
returnable under the act of Congress in that case made and
provided.
Pursuant to the authority conferred by both the inventors, he
amended the specifications and received the patent described.
Effect of the assignment was not only to transfer the whole title
of the several improvements to the assignee but also to confer upon
him the entire control of the pending application for letters
patent. He could cancel the authority of the solicitor or he could
suffer it to remain without restriction or limitation. Plaintiff
reserved no control in the matter, and it does not appear that he
ever attempted to interfere in the premises. Purchase of the
assignee was an absolute one, and he was bound to pay the
consideration at all events. Plainly the other defendants were not
parties to the assignment, nor were they parties to the promise of
the assignee to pay the consideration as therein specified and
repeated in the introductory part of the written agreement.
Page 69 U. S. 603
Their promise is contained in the last clause of the instrument,
and it is conditional, but it is a mistake to suppose that it is
not a joint one with the assignee. Neither the assignee nor the
other two defendants promised to give their notes for the
consideration, excepting on the happening of the condition therein
specified. Legal effect of the promise by all three was that they
would give their joint and several notes for the two unpaid
installments, "payable as aforesaid, with interest aforesaid," as
soon as the patent for the improvement in the grain reaper and
grass mower aforesaid was obtained by the inventor. Obligation to
perform was made dependent upon the future and undetermined action
of the patent officer. Applicants for patents may, by law and the
usages of the bureau, amend their specifications and do everything
authorized to be done by the patent solicitor in this case.
Assignee knew what authority he and his associate inventor had
conferred upon the solicitor, and it must be understood that the
other defendants also knew what was the law upon the subject and
the general usage of the Patent Office. Instructions of the court
therefore were right that when the letters patent were issued, the
assignee was bound, by the letter and spirit of his contract, to
execute his notes. Defendants are right in supposing that a surety
may stand upon the very terms of his contract; that he will be
discharged if any alteration is made in his agreement without his
knowledge or consent which prejudices him or which amounts to the
substitution of a new agreement for the one he executed. [
Footnote 1]
But sureties are as much bound by the true intent and meaning of
their contracts which they voluntarily subscribe as principals.
They are bound in the manner, to the extent, and under the
circumstances as they existed when the contract was executed.
Roth v. Miller. [
Footnote
2] Strong doubts are entertained whether any one of the
defendants can be regarded
Page 69 U. S. 604
as a surety, but it is unnecessary to decide that question at
the present time. Terms of the contract, or that part of it under
consideration, were based on the undetermined action of the Patent
Office, and in consideration of that fact it must be assumed that
the parties not only knew that the specifications might be amended
or withdrawn, but that they contracted in view of the probability
that such changes might be made. [
Footnote 3]
Patentees also are clothed with the power, whenever the patent
granted shall be inoperative or invalid by reason of a defective or
insufficient description or specification, if the error arose from
inadvertency, accident, or mistake, to surrender the same, and
thereupon the Commissioner of Patents, upon the payment of the
duty, is authorized to cause a new patent to issue. Reissue must be
for the same invention, and in judgment of law it is only a
continuation of the original patent, and consequently the rights of
the patentee, except as to prior infringements, are to be
ascertained by the law under which the original application was
made. [
Footnote 4]
Original patent in this case was surrendered, and on the 7th of
February, 1860, four distinct reissues were granted. Prior patent,
as already explained, embraced all those improvements in its
specifications, but the claim was restricted to the principal
improvement. Object of the surrender was to correct that part of
the specification known as the claim, and it is admitted by the
defendants that the reissues cover all the improvements specified
in the assignment, and no more than what was embraced in the
original specifications. Under the circumstances, we are of the
opinion that the instruction of the court that the declaration is
sufficient was correct. Considering the state of the record, we
have not thought it necessary to reproduce the instructions of the
court, but have preferred to state our views of the law applicable
to the case, and only wish to add that the instructions
Page 69 U. S. 605
of the court were in all substantial respects correct. The
decree of the circuit court therefore, is
Affirmed with costs.
[
Footnote 1]
Bonar v. McDonald, 1 English Law & Equity 8;
McWilliams v. Mason, 5 Duer 276;
Maher v. Hall, 5
Barnwall & Cresswell 269;
Bouler v. Cox, 4 Beavan 380;
Islyn v. Hartell, 8 Taunton 208.
[
Footnote 2]
18 Sergeant & Rawle 100.
[
Footnote 3]
Barclay v. Lucas, 1 Term 291, n.;
Miller
v. Stewart, 9 Wheat. 703; 4 Stat. at Large 122.
[
Footnote 4]
Shaw v.
Cooper, 7 Pet. 315;
Grant
v. Raymond, 6 Pet. 244;
Stanley v.
Whipple, 4 McLean 35.
