Blanchard v. Eldridge

GRIER, Circuit Justice. The point here raised by the defendant’s counsel is not without its difficulty, and the force of his argument cannot be evaded if his assumption be true, that this deed transfers the legal title to Carter of that portion of the patent, which it purports to vest in him. But if it does not so operate, it cannot be noticed in a court of law and cannot affect the case. As the grants of the crown were, at common law, construed with the greatest strictness, the privileges granted by a patent for a monopoly, would probably not have been treated as capable of assignment, unless made so by the letter of the grant Since the statute 21 Jac. I. c. 3, § 5, patents for useful inventions (notwithstanding the statute itself mentions the “inventor” only,) have always granted the privilege or monopoly to the inventor, his executor, administrator and assigns. These monopolies are, therefore, assignable as other personal chattels, by force of the grant which creates them. As a chattel also, it might be held by two or more joint owners: Hence any undivided portion or interest in the whole as an unity might be assigned, and if the original grantee died, such assignees might join in an action for an infringement of their right. Boulton v. Bull, 2 H. B1. 463. “But the patent right itself was insusceptible of local subdivision.” Whittemore v. Cutter [Case No. 17,-600]. As a privilege or monopoly, it was an entire thing, indivisible, and incapable of apportionment. Brooks v. Byam [Id. 1.948]. But the act of congress of 1836 [5 Stat. 121, § 11] has regulated the assignment of patents. The eleventh section provides, that a patent shall be assignable: 1st. As to the [625] whole interest. 2d. As to any undivided : part thereof, and 3d. An exclusive right may | be granted throughout any specified part or portion of the United States. The fourteenth section requires the action for an infringement of the patent, to be brought “in the name or names of the person or persons interested, whether as patentee, assignees, or as grantees of the exclusive right within and throughout a specified part of the United States.” The word “assignees,” in this sec- j tion, must be construed by reference to the eleventh section, already referred to, which defines in what way a patent may be assigned — to wit: either the whole or any undivided portion of the whole. This statute also renders the monopoly capable of subdivision in the category of its locality, but in no other way. The patentee is not allowed to carve out his monopoly, which is an unity, into a hundred or more, all acting in the same place, and liable to come into conflict. The grant to Garter by the deed under consideration, is not of the whole monopoly, nor of any undivided portion of the whole, and though for an “exclusive right,” it is not exclusive of all others within a certain district, or specified part of the United States: on the contrary it is an exclusive right to use the machine for a specified purpose. A machine for turning irregular figures may be used for numberless purposes. If the pat-entee or his assignees can assign to A. an exclusive right to use the machine for making shoe lasts, to B. for turning spokes, to C. for axe handles, and so on to the end of the alphabet, then may he, out of his one monopoly carve out a thousand others, each subdivision, like a polypus, being itself a several monopoly, and having a separate existence in the same place. What endless perplexity and confusion must necessarily arise from the establishment of such a doctrine. Suppose the monopoly granted by this patent parcelled out to some twenty submonopolists, with an exclusive right to each to use his machine for* certain purposes, in any given place: what remedy could A. have against B. for an infringement of his special privilege? The patentee or grantor, might restrain his grantee of a machine for a special use, by a covenant; but as between the several grantees no action could lie, although they alone might suffer from a breach of the covenant. : ¡ [NOTE. For other cases involving this patent, see note at end of Blanchard v. Beeves, Case No. 1,515. For opinion subsequently rendered on motion of plaintiff for attachment for disregarding an injunction, see Blanchard v. Eldridge, Id. 1,509.] But it is sufficient for purposes of the present inquiry, that the act of congress has not given a legal sanction to such transfers or assignments, nor subjected even a pirate of the machine to fifty different suits by fifty several assignees, whose several interests might be affected, if a patent could be thus split up into numerous exclusive rights, or submonopolies. Whether the deed confers on Carter and his assigns more than a special license, or what remedy a court of equity might be disposed to extend to him, where his rights are infringed, it is not nec- : essary now to inquire. As it does not con- ¡ fer a legal title to the whole, or an undivided portion of the patent, nor grant “an exclusive right within a specified part of the United States,” it cannot be received to affect this case. It was wholly irrelevant and ought not to have been received in evidence. It adds to my confidence in the correctness of this view, that, as I have been informed, my Brother Nelson has ruled the question in the same way in the second circuit. New trial refused.