Dela Vergne Refrigerating Mach Company v. Featherstone

Statement by Mr. Chief Justice FULLER: This was a bill in equity, charging appellees with infringement of letters patent of the United States No. 175,020, issued to 'James Boyle, his heirs or assigns,' March 21, 1876, for an improvement in gas-liquefying pumps.

The bill set forth, among other things, a full history of the proceedings before the patent office, and alleged that, shortly after filing his application for the patent. James Boyle died, and that thereafter his administrator, who was also an assignee of a half interest, prosecuted the application, paid the final fee, and took out the patent, it being issued in the name of 'James Boyle, his heirs or assigns.'

Appellees demurred generally to the bill, and, the cause having been heard by the circuit court thereon, a decision was announced sustaining appellees' demurrer, on the ground that, Boyle having previously died, there was no grantee in being capable of taking at the time the patent was issued, and hence that the patent never had any validity. The opinion will be found reported in 49 Fed. Rep. 916.

A decree was thereupon entered dismissing the bill for want of equity, and complainant appealed to the circuit court of appeals for the seventh circuit, which entered an order certifying several questions or propositions of law upon which it desired the instruction of this court for their proper decision. These questions or propositions of law are as follows:

'I. On October 29, 1875, James Boyle, of Houston, Texas, having made an invention in refrigerating machines, executed an application for a patent therefor in due form, and verified by the proper oath, and appointed Alexander & Mason his attorneys to prosecute the same, which application was filed in the patent office November 24, 1875.

'Thereafter, and on the 27th day of November 1875, and while said application was still pending in the patent office, James Boyle died, leaving him surviving a widow and four children.

'Thereafter the said application was prosecuted by the said attorneys under the direction of Thomas L. Rankin, who had been appointed temporary administrator of the estate of James Boyle, deceased March 9, 1876, and who obtained the said patent, and paid all the patent office and solicitors' fees therefor. The patent issued March 21, 1876, and the grantees therein expressed were 'James Boyle, his heirs or assigns.'

'On these facts the instruction of the court is desired upon the question:

'(1) Whether the grant to James Boyle, his heirs or assigns, was void because of the death of Boyle before the patent was issued, or whether such grant was valid on the ground that it should be construed in the alternative as a grant to James Boyle or his heirs or assigns, the words 'heirs or assigns' including a grantee or grantees in being capable of taking the patent, and the grant inuring to his or their benefit.

'II. Prior to the aforesaid application of James Boyle for a patent he made a contract with said Thomas L. Rankin, by which Rankin agreed to advance money to apply for and obtain the patent, and Boyle agreed to assign to Rankin one-half interest in the invention and patent.

'On December 2, 1875, after the death of James Boyle, and while the application for the patent was pending in the patent office, Rankin made an agreement with Theresa Boyle, the widow of James Boyle, then acting as executrix de son tort, in the words and figures following:

"Houston, Texas, December 2, 1875. Article of agreement between T. L. Rankin and Mrs. James Boyle. T. L. Rankin, of the first part, agrees to complete the ice machine commenced by himself and James Boyle, and to provide for Mrs. Boyle while said machine is under construction, until next spring, say May first; and also to press the application for patents on the part of said machine claimed by James Boyle, and, in case said machine is a success, and said patents are obtained, is to use his best efforts to introduce the same, and to divide with Mrs. Boyle the profits of said business until she shall have received five thousand dollars for her share after which Mrs. James Boyle agrees to release any further interest in said patents to be obtained and the machines then in use, and from this date agrees that the said T. L. Rankin shall operate and control any interest James Boyle had pertaining to ice machines, together with his interest in the Arctic Ice Company. Stock to vote, proxy of same. T. L. Rankin. Theresa Boyle. Witness: W. T. Scott.'

'After the grant of the patent as above stated, and on the 18th day of July, 1876, the issue of temporary letters of administration to Rankin were superseded by the appointment of the said Theresa Boyle as permanent administratrix. She thereafter filed an inventory of her husband's estate, in which she included the patent in question as held and owned Jointly with Thomas L. Rankin.

'Neither Theresa Boyle, nor her children, nor Thomas L. Rankin ever repudiated the proceedings whereby said patent was obtained, but enjoyed the beneficial ownership thereof, and sold their interests therein for a valuable consideration.

'On these facts the instruction of the court is desired as to the following questions:

'(2) Whether the above-quoted instrument should, under the above facts, be construed as an assignment to Thomas L. Rankin.

'(3) Whether the patent should be construed as a grant to Thomas L. Rankin as assignee.

'(4) Whether, under the above-recited facts, the patent should be held to be obtained by the authority of Theresa Boyle as administratrix, as well as of Thomas L. Rankin.

'III. During the proceedings in the patent office, and after the death of James Boyle, the specification originally filed with said application for a patent was amended within the scope of the original oath and the invention described in said original specification, and by way of limitation of the claims, but without the filing of any new oath or power of attorney.

'(5) Did such amendment render the patent void?

'(6) Is the patent void because no oath was filed after Boyle's death?

'It also appearing that the cause of action below was disposed of upon a demurrer filed to appellant's bill and exhibits, which demurrer the court below sustained, and dismissed the bill, and no witnesses being examined in said cause, it is further ordered that the record as printed in this cause be also certified up as a full statement of facts upon which the questions and propositions stated for the instruction desired from the supreme court of the United States are based; and the clerk of this court is hereby directed to transmit to the clerk of the supreme court of the United States a certified copy of said record, together with this certificate.'

Sections 4884, 4886, 4895, and 4896 of the Revised Statutes are as follows:

'Sec. 4884. Every patent shall contain a short title or description of the invention or discovery, correctly indicating its nature and design, and a grant to the patentee, his heirs or assigns, for the term of seventeen years, of the exclusive right to make, use, and vend the invention or discovery throughout the United States, and the territories thereof, referring to the specification for the particulars thereof. A copy of the specification and drawings shall be annexed to the patent, and be a part thereof.'

'Sec. 4886. Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof, not known or used by others in this country, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, and not in public use or on sale for more than two years prior to his application, unless the same is proved to have been abandoned, may, upon payment of the fees required by law, and other due proceedings had, obtain a patent therefor.'

'Sec. 4895. Patents may be granted and issued or reissued to the assignee of the inventor or discoverer; but the assignment must first be entered of record in the patent office. And in all cases of an application by an assignee for the issue of a patent the application shall be made and the specification sworn to by the inventor or discoverer; and in all cases of an application for a reissue of any patent the application must be made and a corrected specification signed by the inventor or discoverer, if he is living, unless the patent was issued and the assignment made before the eighth day of July, eighteen hundred and seventy.

'Sec. 4896. When any person, having made any new invention or discovery for which a patent might have been granted, dies before a patent is granted, the right of applying for and obtaining the patent shall devolve on his executor or administrator, in trust for the heirs at law of the deceased, in case he shall have died intestate; or, if he shall have left a will, disposing of the same, then in trust for his devisees, in as full manner, and on the same terms and conditions, as the same might have been claimed or enjoyed by him in his lifetime; and when the application is made by such legal representatives the oath or affirmation required to be made shall be so varied in form that it can be made by them.'

Ephraim Banning, Thos. A. Banning, and Edmund Wetmore, (Charels H. Aldrich, of counsel,) for appellant.

L. L. Bond and C. E. Pickard, for appellees.

[Argument of Counsel from pages 214-220 intentionally omitted]

Mr. Chief Justice FULLER, after stating the facts in the foregoing language, delivered the opinion of the court.