Waterman v. Mackenzie

(5) An assignment, made April 16, 1886, and recorded April 22, 1886, from Mrs. Waterman to the plaintiff of all her right, title, and interest in the patent and invention, and all her claims or causes of action for the infringement of the patent, and rights to damages or profits by reason thereof. The circuit court allowed the plea, for reasons stated in its opinion, as follows: 'The transfer to Asa L. Shipman is in language so emphatic and exact that there is little opportunity for misapprehension. It matters not what the instrument is called. It matters not that it may be defeated by the payment of $6,500 on November 25, 1887. The fact remains that by virtue of this assignment or mortgage the title to the patent was on April 24, 1886, when this action was commenced, outstanding in Asa L. Shipman. If it was not absolute, it was a present, existing title, defeasible upon a condition subsequent. On April 16th, therefore, when Sarah E. Waterman assigned all her right, title, and interest to the complainant, she had nothing to assgn which could at all change the legal status of the parties. She could not vest a clear title to the patent in the complainant, for the obvious reason that she had previously disposed of it, and did not own it. The agreement of November 20, 1884, being a license and nothing more, does not enable the complainant to maintain this action without joining the holder of the legal title. The suggestion that, irrespectively of the Shipman assignment, the complainant is enti tled to prosecute for infringements alleged to have occurred between February 12 and November 25, 1884, is equally unavailing; for, assuming such a right of action to exist, it could only be maintained on the law and not on the equity side of the court. The plea is allowed. The complainant may amend, upon payment of costs, within ten days.' 29 Fed. Rep. 316.

The plaintiff not having filed an amended bill within the 10 days, a final decree was entered dismissing his bill, with costs, and he appealed to this court.

Walter S. Logan, for appellant.

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