Moore v. Marsh

ERROR to the Circuit Court for the Western District of Pennsylvania.

The eleventh section of the Patent Act of 1836, relating to the assignment of patents, thus enacts:

'Every patent shall be assignable in law either as to the whole interest, or any undivided part thereof, by any instrument in writing, which assignment, and also every grant and conveyance of the exclusive right under any patent to make and use, and to grant to others to make and use the thing patented, within and throughout any specified part of portion of the United States, shall be recorded,' &c., &c.

And the fourteenth section, which relates to damages in suits, brought by the owners of patents, for infringement, says:

'And such damages may be recovered by action on the case, in any court of competent jurisdiction, to be brought in the name or names of the person or persons interested, whether as patentees, assignees, or as grantees of the exclusive right within and throughout a specified part of the United States.'

This statute being in force, Moore, a patentee, brought suit in the court below, against Marsh, for infringement. Marsh pleaded that after the date of the alleged infringement, he Moore, the patentee, had sold and assigned an undivided half of the patent for the district where the infringement was alleged to have been committed. To this plea, Moore demurred. The court having sustained the demurrer, and judgment being given accordingly, the case was brought here by the patentee on appeal.

The general question therefore, was, whether a sale and assignment by a patentee of his patent right is, under the fourteenth section above quoted, a bar to an action by him to recover damages for an infringement committed before such sale and transfer? In other words, whether the words of the statute 'name of the person interested,' meant, as the plea assumed, 'persons interested in the patent at the time when the suit was brought;' or meant, as the declaration assumed, interested at the time when the cause of action accrued.

The case was submitted on briefs.

Mr. S. S. Fisher, for the patentee, appellant, argued, that the latter, or interested in the damages, was the plain meaning; that it would be unreasonable and contrary to all analogies of the law, that a simple assignment of a patent-right should carry with it the right to all previous damages, carry with it all the damages which had ever accrued to its former owners in the whole course of the patent's life, and from the date of the letters patent; that back damages were not a matter inherent in, sticking to, and inseparable from the patent, but were a matter which belonged to the owner in his individual right. And this natural view, he considered, was supported by the authority of this court in Dean v. Mason.

Messrs. Henry Baldwin, Jr., and W. Bakewell, contra, argued, that the words of the fourteenth section of the statute, meant interested in the patent, and not interested in the damages; and that this was manifest—

1. By comparing this fourteenth section with the eleventh section above cited.

2. By the fact that licensees were excluded, though they were frequently the only parties interested in the damages, while the plaintiff in such cases is the party interested as patentee, assignee, or grantee of an exclusive right, and had no interest in the damages.

3. From the decisions (as the learned counsel interpreted them) of this court and of several of the circuit courts.

An opposite view, they contended, might lead to gross oppression. According to such view, a party who, in mistake as to his rights-and in these nice questions of mechanical principle, innocent mistake might well occur-may have infringed a patent during a number of years, is exposed at the end of the term to as many separate suits for infringement as there have been separate owners of the patent during the time he has been using it; and may have to defend against fifty separate actions brought by as many different plaintiffs for what has been a continuous act of user of the patented machine. Such a hardship could never be intended by Congress, and this court would not put a construction on the act fraught with such oppressive consequences. This argument, ab inconvenienti, was considered a sound one in this court (the counsel argued), in Gayler v. Wilder where Taney, C. J. pressed it in behalf of the court, by Mr. Justice Grier, in Blanckard v. Eldridge, where speaking of the eleventh section of the act, he says that 'the act of Congress has not subjected even a pirate of the machine to fifty different suits by fifty several assignees, whose several interests might be affected.'

Dean v. Mason, relied on by Mr. Fisher (the counsel argued), did not apply. It was an assignment pendente lite, the moreover of a more license.

Mr. Justice CLIFFORD delivered the opinion of the court.