Kennedy v. Hazelton

This was a bill in equity for specific performance, filed November 12, 1887, by a citizen of New York against a citizen of Illinois, and contained the following allegations: On July 10, 1884, the defendant, in consideration of the sum of $10,000, paid by the plaintiff to him, made an assignment to the plaintiff of an interest of one-half in two patents previously obtained by the defendant for steamboilers; and also made a written contract, acknowledged before a notary public and recorded in the patent-office, by which the defendant agreed to assign to the plaintiff any and all patents which the defendant might thereafter obtain from the United States or the Dominion of Canada, for inventions in improvements in steam-boilers, and further agreed not to assign such in ventions, or the patents obtained therefor, to any other person. In 1885, the defendant publicly stated that he had invented such an improvement, and explained its general plan and construction; and afterwards combined and confederated with one Goulding to avoid and evade the effect of the contract of July 10, 1884; and for that purpose the defendant caused to be prepared at his expense, but in the name of Goulding, the necessary papers to procure letters patent for this invention; and Goulding, without any consideration received from the defendant therefor, assented to be used in that regard as the alleged inventor of the improvement, and, at the request and by the procurement of the defendant, filed an application under oath for a patent for it, which application was allowed; and Goulding, before the issue of the patent, assigned in writing to the defendant all his interest in the improvement and in the patent therefor; and on December 14, 1886, a patent was issued to the defendant accordingly, as assignee of Goulding, a certified copy of which was made part of the bill. The bill further alleged that the defendant was, and Goulding was not, the original and first inventor of the improvement so patented; that the defendant had engaged in the manufacture and sale of boilers under this patent, and had received, and was receiving, great benefits therefrom; that the patent was of value exceeding the sum of $5,000, exclusive of interest and costs. The bill prayed for a decree that the defendant assign this patent to the plaintiff; for an adjudication that the title to it equitably vested in the plaintiff at the date of its issue; for an account of profits received by the defendant from its use; for a preliminary injunction against transferring or incumbering the patent, or manufacturing or selling boilers containing the improvement described therein; and for further relief.

The defendant demurred to the bill: (1) For want of equity. (2) For multifariousness, in embracing two separate and distinct causes of action,-one to enforce specific performance of a contract; the other for the infringement of a patent. (3) Because, as appeared by the allegations of the bill, the patent was absolutely void, and no suit could be maintained, either to compel its transfer, or for infringement thereof.

The circuit court sustained the demurrer for the third reason, and dismissed the bill. 33 Fed. Rep. 293. The plaintiff appealed to this court.

C. A. Seward, E. Banning, and T. A. Banning, for appellant.

[Argument of Counsel from pages 669-671 intentionally omitted]

L. L. Bond and E. A. West, for appellee.

Mr. Justice GRAY, after stating the facts as above, delivered the opinion of the court.