.... ,
916 , I. .-. \
FEDERAL:ltEPORTER,
voL 49.' FEATHEltSTONB
. DB 'tAVuGNEREFRIGERATING MAcH. Co. v. 1.
et aI..
(Oircuit Court, N. D. lllinof.8. February 29, 1892.) PATENTS FOR INVENTIONS-VALIDITY-IssUE OF PATENT TO DEAD' MAN.
Under Rev. St. U. s. § 4896, which provides that, if an inventor dies before a patent is granted htmi the:rigllt of applying for and obtaining a shall vest in his personal reprllsentatives, a patent issued to an inventor aftelt death, he having died attermaking application for such patent, is void. , Where a patent is void beoausegranted to a dead, man, representations that the patent Is valid, made by a party interested in it, do not estop him from denying its validity, as against II person 'Who does not claim title through him.
S.
SAME-EsTOPPEL IN PAIS.
IhEquity. On demurrer. Bill by the 'De la Vergne Refrigerating Machine Company against John Featherstone and others to restrain the of a patent. Defendants demur. Demurrer tained.' ' :, ' Banning, Banning&:' Payaon, for 'complainant. Bdnd,.Adams &: PWkard, for defendants. , ,BWl;>GE'1'1', is now before the court on a generllldemurrer to the nill of complaint. The matters Eietforthinthe bill necessary to be considered on this demurrer are that before the 24th of November, 1875, one James Boyle had invented the device covered by the patent, infringement of which is charged in this case, and onthe said 24th day or he filed his application for his patent, and appoint-edAlexander& Mason his attorneys to solicit and advocate his application; that on the 27th of said month of November,ahd. before the allowance of, hisptitent; the said James' Boyle died intestate, leaving a widow,Theresa M. Boyle, and four children; that on December 2,1875, Mr$.' Boyle. the widow, entered into a contract with Thomas L. Rankin, whereby he agreed to complete an ice machine-, which was in processofcc#lstruction at the time of Mr. Boyle's death,and to press the application for a patent, and, in case: a patent was obtained, to use the machine, and share the profits with Mrs. his best efforts Boyle until she should have receivedS5,OOO, when; she was to assign the patent and the machines then in use to Rankin; that, under tion of Rankin, Alexander & Mason, the solicitors appointed by Boyle, prosecuted the .application for a patent, and, to overcome· objections made by the, examiner to the said specifi(',ations andclil.ims Ihade by on the 20th of December, 1875; the specRoyle, said ifications ahd6laims, as the same had been prepared by Boyle, and thereafter, ari;d I:>h the 21st day of Mar"'h, 1876, the patent:No.175,020 was granted '\intoJames Boyle, his heirs or assigns, for the' said invention,for the'p'eridd of 17 years from the last-mentioned date; that on the 9th day of Mlirch, 1876, said Thomas L. Rankin obtaineditemporary"lettefs ohdmiriistrationon the 'estate of said James Boyle, and afterwards, and about the 5th day of July, 1876, Theresa·l\L,Boyle, the widow of said James Boyle, was appointed administratrix of the estate
DE LA VERGNE REFRIGERATING MACH. 00. fi. ·FEATHERSTONE.
917
of said James. The bill then states divers dealings with the patent by several persons and corporations, among whom are the Boyle Ice Companyand the Consolidated Company, in which companies the defendant Skinkle was a stockholder and officer, which companies had, by Bome instruments of writing or agreements, the right to manufacture under the said patent for a term of years, but which tern,l had elapsed before the present complainants had acquired what they called the title to said patent, and that. the defendants Featherstone had manufactured ice-machines ill accordance with the patent, under contracts with said corporations; that defendant Skinkle, while acting as an officer of the Boyle Ice Company and Consolidated Ice Company, had asserted the validity of the patent in divers ways, fi.nd especially by an affidavit filed in the patent-office. The contention of the defendants on the demurrer is that the patent was void from the beginning, because the was· dead at the time the patent was granted; that there was, in fact, no grantee in the patent. It is a proposition so axiomatic and aa to require no citation of authority, that all the and remedies of inventors to the exclusive property in their, inventions comes from the statutes. It is the patent issued to the patentee in pursuance of the ·constitutionand laws pnited States which gives him the property right in his invention, protects him in the use thereof. As was said by Justice GRIER in Child v. Adam.s, 1 Fish. Pat. Cas. 189: "The power of the commissioner of patents to issue patents, and the effect of them, is carefully defined by the statute. By defining the conditions un, del' which the power it confers shall be exercised. it necessarily excludes all others, except, perhaps. the correction of theil' own clerical errors." See, also, Morton v. Eye Infirmary, 2 Fish. Pat. Cas. 320. The statutes of the United States recognize only three classes of persons to whom a patent for an invention can issue. These are-First, the inventorbimselfj seccmd, the assignee of the inventor,when the assignment is m.ade before the issue of the patent; and, third, the executor or administrlltor of the inventor, if the inventor dies before the patent is granted. Rev. St. U. S. §§ 4886,4895,4896. "A patent for an invention is a gI;ant by the state of the exclusive privilege of making, using, .and vending, and authorizing others to make, use, and vend, an invention." 2 Kent, Comm. p. 366. In Galt v. GaUoway, 4 Pet. 332; McDonald's Heirs v. Smalley; 6 Pet. 261; Galloway v.Findley, 12 Pet. 264, ....,..it was.b.eld "that a patent of lands to a dead man and his heirs was void. and conveyed no estate;" and the same is affirmed in Davenport v; Lamb, 13 Wall. 418. And, upon the principle established in these cases, I am unable to see why a patent for an invention to a dead man is not wholly inoperative. The grant by letters patent to a man and his heirs, or his heirs and assigns, for an invention, conveys an estate of inheritance during the existence of the rights created by the grant... But for the 'Use of the word in the statute and the patent, the grant might:he c.oni:\tme.d as wholly.personal, and to end with.the .life: .of the grantee. . On the oUhe the r.igQt securedgoos,
918
FEDERAL REPORTER,
vol. 49.'
n9t to heirs themselves, but .to the persona] representatives of the deoeased, in trilst for the heirs or devisees. Valve Co.'v;':New Bedford, 19Fe<,{.Rep: 753j Bradley v. Dull1ld. 913. In othenfdrds, the grant to a living patentee isoomplete andoperative-..Fir8t, to the patentee or grantee named l if livingj and, 8econd, in the event of death during the tern.il.,of the patent, to his personal representatives,. execntors, or ministtators, for the' use of his heirs. In this patent there was no the person named as grantee or patentee was dead at the time of the grant, and therefore there was no person to take the thing granted, aud hence tbeg1'8nt never took effect. There is no hardship in this construction of the; law; for by section 4896, Rev. St., it is provided that, if a peraon who bas made any new invention or discovery for which a patent may have been granted'shall die before a patent is granted, the right of applying for and obtaining a patent shall vest in his executor or admiuistrator t in trust for his heirs, devisees, or assigns, and it also provides for the manner in which they shall prosecute and obtain a patent. Under thl'J provisiollsof this section, it is plain that, .on the death James Boyle while the proceedings to obtain the patent were incomplete, his administratorahould have snggestedhis death to the patellt-office, and taken up the pi"08ecution of theapplicati,on, and secured the issue of the patent to the .dministrator. The8tatute, by its express words, provides for the administrator or executor to prosecute the application in case of the death of the inventor before the patent is granted. The aUegatipns in the bill that, alter the death of Mr. Boyle, his widow made a dontractwith Rankin, by which he was to prosecute the application for and obtll.in the patent, do not, as it seems to me,help the case. Mrs. Boyle;' at the time !lhe made the alleged contract with ,Rankin, was not administratrix of her husband's estate, and had no rit-tht to act in the premisesiand oould not clothe Rankin with any' authority to act. In lact,she W8snot a.ppointed administratrix until a.Jter the patent-office had allowed tbijpatent, and nothing remained to be done but to pay the final fee. The authority of Alexander & Mason, the solicitors appointed by Mr. Bpy'le; ended with his death, and all steps taken by them after Mr. Boyle's death to procure the issue of the patent were wholly without authority {rom any onehavingaoy power to act in the matter. The statute having in clear terms provided what shall be done to preserve an inventor's right to a patent in the event of his death be:ore the patent is granted, there seems to·me no escape from the conclusion that it is only by following the mode pointed out brthe statute that a valid patent can be obtained in such cases. It is ntotnecessary, for the purposes of this case, to decide whether a new applicationahould have been filed by the administl'ator,orwhether the administrator could have stepped into the the death of the applicant, and been allowed to continue tbe' proceedings in the name of, the administrator. This, perhaps,would beamatterof practice for the patent-office to decide. But to whom'the plltent shall issue is a :matter of Sll bstance,and I am clear that,af'tell Jtbedeath of the applicant, the patent can only issue to an executor or administrator, as provid:ed by statute.
of
DE LA VERGNE _RIGERATING.MACH. CO. 17. FEATHERSTONE.
It is also insisted, in support of the demurrer, that the changes made in the specifications as.',9riginaIly prepared,. and which were properly signed and verified by Boyle, so that the patent was not granted on the specifications and clQ.ims made by Boyle, also vitiated the entire proceed. ing, and rendered the patent void, on the authority of Eagleton Manuf'g Co. v. West,Bradley &: Oareylrfanuj'g Co., 111 U. S. 499,4 Sup. 593; and while there is m.uch force in this point, as there can be no doubt that all authority of Alexander & Mason to act for Boyle in the prosecution of the appliCation for the· patent ended with the death of. Boyle, yet I prefer to place my decision on the more cogent argument thattbepatent was void. ab initw becauSe Boyle, the grantee, was dead at the time the pahmt was i s s u e d . . . ' Qqite a portion of the bill is taken up with allegations showing, or' tending to show, that the defendant Skinkle has dealt with the patent, at some time since its issue, as a valid patent, that he has held it o.ut to the public as .ralid, and that, in certain proceedings instituted in the patent-office, he made affidavit as to its validity. The bill sho'l\'sthat for a time. Skinkle was an officer and stockholder. in certain corporations engaged in the manufacture and sale 'df ice.machines unaer this patent,' but it also shows that whatever interest those companies had in the pat. ent had terminated before the present complainant acquired its title. If this patent was void from the beginning, no conduct on the part of. Skinkle, or those associated with him, could give it validity. No rule of estoppel can be callEid into aid these complainants, who, by the showing of their bill, did not acquire title from Skinkle, or the corporations with which he is connected, in dealing with this patent as against the public, if it was void from the beginning. .That there are· cases where .parties may, byde.aling with a patent, estop themselves from denying its validity, is undOUbtedly true; but none ofthe cases cited go to the extent of bolding that any acts of anindividnal can vitalize and make valida pat· ent which never had validity, or took effect as a grant. I do not, fore, see'tbat any force is added to the complainant's case by these allegations. Ifll.ny person had challenged the validity of this patent in the bands' of the Boyle Ice Company or the Consolidlited Ice Company, while Skinkle was a member of'tbose companies, no acts of his, supporting or alleging the validity of the patent, would have been in the least material in resisting such challenge. As to the defendants Featherstone, the only allegation of the bill is that they manufactured ice.machinesforthe Boyle Ice Company and the Oonsolidated Ice Company wbile those companies considered themselves'entitled by their licenses or other agreements to the use of the patent. They were, at the most, mere employes of the principal infringers, and cannot possibly be held to have either indorsed or validatadthe patent by their action in manufacturing machines such as are described in the specifications. For tbesereasons the demurrer is sustained, and the bill dismissed for'want of equity. 'I, . ;i.::.\'
92()
J'EDERAL REPORTER,
voL 49. 'et
COMMOSS 11. SOMERS
ale
«(X,.cuCt 1.
CO'Uf1,
E. D. New York. April 6, 18119.)
a.
patent No. 184,759, issued November 28, 1876, to Joseph T. Commoss, claim "the method of preparing metal plates for direct printing by mesH of pale boiled oU, BEluguela 'varnish,turpentine, white lead. magllesia, and soap-stone, in about the proport!ons and in. the manner herein substantially set :forth and described." Hela, that the patent covers only the speoi1ied method of Using this partioular com. position, and Is ,valid to The'onlyeVidence as to infringement was the testimony of tlie plaintiff, as an expert""to" th,e" effect th,at, ,in b,iS opinion, a certain box, shown, in. evidence, was printed. :trow treated with a composition "varnJsh, boiled 011, and liom'e'oo10l'M't>lgment," "in suoh proportions and consuitencyas to produce a smooth sUrface,;' without stating that it was dried, or trea)ied with soap"stone andml!olrnesil!ot according to his, method. Held, that this was no evidence whatever of lnfi-itigement, .and hence that no presumptions could be indUlged against defeIidantittem his failure 00; show the nature of his oomposition and method of treatm,erl,t.; : ",'
·. IlJVIIINTIONe---;ExTBNT 011' CL,UX-P1llllPARING PLATB8 MR PRINTING.
In by T. Commoss against panie1 T. Somers and JPr, infringe!u('lnt of a patent., Bill dismissed. " Samuer" for orator. Robertll.{!ttrn:a.n, for defendantll. '/.'i '
WHEEL'I!:R"l>istrict Judge. This suit ,is brolJght upon patent No. 184,759. ofNQvember 28. 1876, gra,nted to the fo,r,an ment preparing :metat,surfacesfor printing ,upon," SQ that they 'printed upondire<lt, and afterward!! struck up without injury.';l'he:specification describ('ls using a composition of nine pints of pale boiledr;()iltSix of Benguela and one of turp('lntine, with 16 pounds . oL;white lead ground inoH, mixed, at 125 deg. Fahrenheit, strained or more graduated wire screens, applied to the plates, and keeping tbemat125 deg.Fahrenheit 48 hoUrs! when they are powdered1Vith two parts of magnesia and one of,soap-stone. The is Qf preparing metal: plates for direct printing by means Qfpllle. boiled oUt Benguelllo varnish, turpentine, white lead, magnesia, andriIlOJl.p-stone in about the proportioDsand :in the mann('lr substantiallY,Mherein setforth and de.scribed." This seems to be a pat. ent for this.:p,l'e¢ise method, of using this particular The upon are ,not shown to have been by this method, nor substantiqJlyrlike it, and the patent appears tOQe valid. No infrhigement is shown except by a metal pOJC, about which the plaintiff testifies as an expert: "I am ;cMtldent: that the plate from Which this box lsmBde was first coated elastic smooth body or composition composed of varnish. boiled oil. and some CQlored pigment. or such proportions Rndconsistency as to produce a smooth surface; and such composition haslloated on thE' sur. face of such plate so as to dry without brush-marks. After this composition has been dried, the plate has been printed on in a lithographic press, and then formed into the box."