ASPINWALL M:ANUF'G
CO. V.
GILL.
697
office that Stannard was the prior inventor in the interference proceeding to which the defendant was a party is sufficient prima facie to entitle defendant complainant to this relief. But it does not appear that has ever asserted any rights under the Elmer patent, and, when the interference was declared, he permitted the proceeding to go by default. Under these circumstances, and as no issue has been made by the defendant by pleading or proof upon this branch of the case, costs should not be decreed against him.
ASPINWALL MANUF'G Co. 1.
V.
GILL and another.
(Oircuit Oourt, D. Ne'IJJ Jersey. July 18, 1887.) PATENTS FOR INvENTIONS-LICENSE-EXTENT OF.
A defendant in an action for the infringement of a patent pleaded a license to make 100 of the patented machines. The evidence showed that he had made 125. Held, that he was not protected by the license as to the excess over 100, although the patentee had delayed the defendant, and prevented his making the 100 to his contract, and caused. him aamage thereby. Where a patentee assigned his patent for $12,000, "together with all the im· provements I may bereafter make, without further cost," the assiA'nee is en· titled to make and sell the original inventions as improved after his assign· ment. · ; An assignee of a patent, whose assignment is properly recorded, is protectell as to all of his rights thereunder,as against a subsequent assignee of the patentee. A part owner of a patent cannot maintain an action for infringement against anotber part owner.
So
SAME-AsSIGNMENT-FuTURE IMPROVEMENTS.
8.
SAME-ASSIGNMENT-RIGHTS OF ASSIGNEE.
4. 5.
SAME-INFRINGEMENT-ACTION BY PART OWNER.
SAME-IMPROVEMENT-WHAT CONSTITUTES.
The patent No. 276.994, issued to Lewis A. Aspinwall, May 8,1883, of a potato planter, was merely an improvement of patent No. 235,401, issued to the same inventor, December 14, 1880, and was not for a separate and different macbine, as the difference in the two machines consisted simply in making the barbs which speared the potatoes, and carried them to the dropping place, straight, instead of hooked, and thus facilitating the action of the device.
In Equity. On planter patents. Francia Forbes, for complainant. F. C. Lowtlwrp, Jr., for defendants. BRADI.EY, Justice. The bill in this case was filed to restrain the infringement of two certain patents, and to recover profits and damages for the infringement thereof. The patents sued on were granted to Lewis Augustus Aspinwall for improvements in potato planters,-one dated December 14, 1880, and numbered 235,401, but subject to the limitation prescribed by section 4887, Rev. St. U. S., by reason of a British patent for the same invention, dated October 27, 1874, and July 30, 1878; the other patent sued on was dated May 8, 1883, and ,numbered 276,994. By separate deeds of assignment bearing date September 19,
698
FEDERAL REPORTER.
1885, the said· Aspinwall assigned said pittents, and all claims and demands against any party for infringing the same, to the complainant. The bill alleges infringement by the defendants, and prays the usual re. lief. The defendants set up two grounds of defense: a license from Aspinwall, and an assignment of a part interest in the patents themselves. 1. The license relied on was pleaded in this wise: They allege that about the first of January; 1882, Aspinwall, after having obtained the first of the patents sued on, and made application faT the other, and having, as he asserted, obtained letters patent from 'the governments of Great Britain and of Germany for improvements in potato planters, agreed with the defendants for the construction and sale by them of 100 machines contaiping the said. improvements, and also 100 machines known as potato diggers. The answer states that the object of this agreement was to bring the machines into notice, and to introduce them into common use; and that, in pursuance of the agreement, the defendants expended a large amount of money under the direction of said Aspinwall, who, in violation of his agreement, left the works of defendants in August, 1882, and forbade them to make any more They deny that they have ever used or sold any machines except those constructed upon the express order of Aspinwall prior to said agreement, or in pursuancethe'reof afterwards. The evidence in the case shows that suchan agreement was made as stated in the answer; and that Aspinwall superintended the ,making of machines in the 9-efendants' works at Trenton, during the year 1882, until some time in August of that year, when the parties had a difficulty, ' which resulted in Aspinwall's leaving, and forbidding the defendants to manufacture any more mac):ljnes. I not satisfied, from the evidence, that Aspinwall was justified inhis conduct. T. think the right to complete the manufacture of 100 machines remained in the defendants, and that they cannot be called to account in this suit for completing and disposing of the same. It is also. very clear that Aspinwall, during the years 1883,1884, and 1885, endeavored to embarrass the defendants in disposing ofthe machines made by them, by announcing that they had no right to manufacture them, threatening suits against purchasers, etc. All this was sufficient to excuse the defendants in some delay in completing the 100 machines. But the evidence is very-clear that they had manufactured and disposed of the full number before thIS suit was commenced, and, that they had undertaken the manufacture of several more. Bennington Gill himself testifies that they had made and sold 85 machines before the commencement of the suit; that they had made in all 125, all of which,except about a dozen,were entirely completed. Of course, the defendants cannot pretend thattheir'lieense to build 100 machines gave them any right to build any more than thatjand it is clear, therefore, that in making the remaining 25 machines they were acting -mthoutauthority. The defense of licenfle is good, and has been tilineda:s to the 100 machines, 'but no more. As to the others, this defense fails. If Aspinwall was guilty ·of misconduct in trying to embarrass the defendants Hi the disposal of their 100 machines, he may have
ASPINWALL !l{ANUF'G CO. 'V. GILL.
699
made himself liable to an actioI).for damages; but he did nottll,ereby extend the license beyond, 100 machines. ' ,2. The other defense set up in the answer is part ownership of the patents sued on, alleged to have been acquired by the defendants by viriue of certain assignments. It seems that in 1869 Aspinwall obtained certain letters patent for a potato planter, dated November 30 of that year, and numbered 97,339, which contained at least some of the elements embraced in the two patents now sued on. On the fifteenth of January, 1870, he assigned this patent to 11 persons (including himself as one) by an instrument of which the following is a copy, to-wit: "IMPROVEMENT IN PQTATO PLANTll:RS, No.'97,339. "What I claim as my invention, and desire to secure by letters patent, is: (I) A spear, or spears, provided wit,h trips; (2) operating the trips, substantially as described; (3) the V-shaped concave, Of constructed and used in the manner described; (4) swinging the plow and covers from the main frame, substantiaUy as described, and for the purposes set forth. "L. AUGS. AsPINWALL. "Whereas, L. Augustus Aspinwall, of Albany.N. Y., did on the thirtieth day of November, ·1869; obtain letters patent for the United States of America, securing him. his heirs, awuinistrators, or assigns, for the term of seventeen years, the sole right to, make, vend, and sell to others, to be used. the said improvements; and whereas, D. H. Wyckoff, Stacy P. Conover, .Joseph H. Holmes, Joseph J. Thompson, John I. Thompson, Jonathan Longstreet, George Schanck,Garret R.8chanck, Daniel Smock. David Schenck,Jr., L. A. Aspinwall, are desirous of obtaining. an interest in said invention, this is therefore to certify that I.L. Augustus Aspinwall, do hereby set. sell, and conyey over to said parties my entire right and title in. said patent for the following territory, viz., the United States of America, withqut reserve, for the sum of twelve thousand dollars, the receipt of which is hereby acknowledged. together with all improvements I may hereafter make. without further cost. "Witness my hand and seal the fifteenth day of January. 1870. [Signed] "L.AUGUSTUS ASPINWALL. [L.8.] "Witnesses: JONATHAN LONGSTREET. "GEORGE SCHANCK."
On the eighth day of November, 1$82, four of the parties named in the previous assignment, to-Wit. David H. Wyckoff, Stacy P. Conover. Joseph H. Holmes, and Jonathan Longstreet, assigned and transferred unto George Schanck, (another of said partiil's,)bis heirs and assigns, all their right, title, and interest in the said patent, No. 97,339, conveyed by the previous assignment, and to the assignment of the patent added the following words, to-wit: " And we, the parties of the fir,st part, do relinquish and quitclaim all in· terest or claim of whatsoever nature or descrintionwhich we now have or hold in the said patent 97,389, unto the said George Schanck, his heirs and assigns, forever." ; This instrument of assignment was recorded. in the patent-office,Febmary 28, 1883.
1882.
This instrnment was duly recorded in the patent-office, November 3,
,
700
I"' .
On the thirteenth day of DecelI1ber,1882, a deed of assignment was made by the said George Schanck, both for himself and as heir at law of GarretR. Schanck, and by Joseph 1. Thompson and John 1. Thompson, to the defendant Bennington Gill, whereby they assigned to him all right and title in said patent No.1:l7 ,339, dated November 30, 1869, and in and to all improvements on said invention made after said date by said Aspinwall, or that might be made, as fully and completely as it was vested in them. This assignment was also recorded in the patent-office, February 28, 1883. It thus. appears that in Decembf'r, 1882, the defendant Bennington Gill became the l\ssignee of eight of the 11 persons to whom Aspinwall assigned the said patent in January, 1870. Now, theeontention of the defe1i'l!1tnts is that the patents sued ongranted, as before stated, one on December 14, 1880, and the other on May 8, 1883-are for mere improvements upon the potato planter, which was patented by the previous patent of November 30, 1869; and that by the assignment executed by Aspinwall on the fifteenth of January, 1870, whereby he assigned .thela.st-named patent, with the addition of the words, "together with all improvementB Tmay hereafter make," the inventions set forth and secured by the patents of 1880 and 1883 are covered and conveyed; and therefore that the defendant Bennington Gill is in fact the owner of eight-elevenths of the patents sued on; and that the complainant corporation, as assignee of Aspinwall, is the owner of only one-eleventh part of the same·. : If this position of the defendants be cor.rect, it is evident that the present suit cannot be maintained. For, even if the assignment of improvements to be made in futuro does not convey a . legal interest in a patent taken out for such future improvement, yet, if vahd at all, it certainly conveys an interest, entitling the assignee to call upon the holder of the legal interest for an assignment thereof to the extent of the equity. That such assignments of future improvements upon a machine, in connection with the assignment of a patent for such machine, are valid, is settled, I think, by the case.of Littlefield v Perry, 21 Wall. 226. A naked assignment or agreement to assign, in gross, a man's future labors words, a mortgage on a man's brain, as an author to bind all its future products,-does not address itself favorably to our consideration. It is something like engagements of an expectant heir, binding the property whicbhe may afterwards iriherit, which are always looked upon with disfavor by the law. But where a man purchases a particular machine secured by a patent, and open to an indefinite line of improvements, it is often of great consequence to him that he should have the benefit of any future improvements that may be made to it. ,Without that" the whole value of the thing may be taken away from him the next day. A better machine might be made by the inventor, and sold to another party, which would make the machine acquired by the first purchaser entirely useless. These things happen every day. And hence it has become the practice, in many cases, to stipulate for all future imthat may be made by the same inventor upon any particu-
ASPINWALL MANUF'G CO. V. GILL.
. lar machine which he induces a party to purchase from him, sometimes by way of license to use such improvements, and sometimes by way of purchase and ownership thereof. Where the inventor is connected in business with the party making such stipulation, or is interested in the profits arising frottl the business in which the invention is used, the arrangement seems to be altogether unobjectionable. But such a connection or interest does not seem to be necessary to the validity of such bargains. If based upon a valuable consideration, they are sustained as collateral or incidental stipulations connected with the conveyances of a principal subject. Here was a sale of a patent f<:lr the solid sum of $12,000, upon a stipulation to have the benefit of 'all future improvements; which means, of course, all future' improvements upon machine which was the subject of the :patent conveyed; 'fhe consideration was a valuable one, probably of great consequence to Aspinwall at the time. He may not have anticipated then how much better the machine could be made, how great improvements,it was capable of, how valuable it would come to be. It was as perfect then as he knew how to make it. He may have estimated at low value any possible future improvements. But, whatever were hiE'! views, he was willing to make the bargain, and did make it. I do not see how he can avoid being bound by it; and, if he is bound, his assignee, the complainant, is in no better plight, for the assignment was put on record long before the complainant became owner ' of the present patents. But the complainant meets this defense by denying that the machine covered by the present patents is an improvement upon the old machine covered by the patent of 1869; on the contrary, the complainant contends that it is altogether a new machine': working on a different principle. It cannot be denied. hOwever, that both are potato planters; that both are erected on a two-wheeled vehicle, which is drawn aloug bya tongue, like a cart; that both have a b.opper into which the potatoes are deposited preparatory to planting; that both have a passage-way, called a "concave," for the potatoes to pass into, where they are taken up by the machinery, one at a time; that the device for taking them up is a series of spears attached to a disk which is caused to revolve by the movement of the wheels of the cart; and that these spears are carried, as the disk revolves, successively, to the potatoes lying in the passage-way or concave, and each spear impaled a potato, and carries it up and around to a tripping device, which throws the potato off of the spear, and into a conductor that carries it to the ground. The new machine is better than the old one, no doubt; the spears are differently arranged, so as to secure a potato more certainly every time; and other improvements are adopted; but to say that it is not an improvement on the old machines is to abandon the dictates of common sense for the transcendental distinctions of ingenious theory. The principal ground for denying the new· machine to be an improvement of the old, is the difference in the arrangement of the spears; the old spear being bent like a hook, so as to strike the potato tangentially, and· the new one being straight, nearly in
.
101
702 line with the-.mdius ofthe'l dislt r tQ' which it is This a fereuce in.form l , but not: ill. principle. The pbject in both cases ,is to spear the potato. By :t4e'old strike it with the speati by the new, you potato while thesnear it. ''I'b;e last is ;much the better device,: lito doubt". but.in };>pth you spear the p,o·tato. 'I'M last plan of doing it)s an improvement on old plani that is, all. The patent-office patent may! make two classes, if they please, andeaU one Ii,hpokedrspear cllJ,ss, and the other a spear classi but that eallnot set,tlethe mlltter.'l'hese classilications areeritirely arbitrary, and may descend to infinitesimal differen.ces. common sense of the thing ,is the only criterion of the rights of the parties, and ofthe legal rules by to be decided. , lnmy opinion, the as described in ,the patents of 1880 and 1883 is but an improvement upon the machines as described in the patent of 1869, within the true sense and meaning of the word ments," .as used in theassignmeI\t ofJanuary 15, 1870. . Under this view of the effect. of the aE\sigllment, the bill, of course, _must be dismissed. The owner of one-eleventh of a: patent cannot suethe owner of eight-elevenths of it for. an infringeme.I;lt"even though the ownership of the latter be only an equitable interest. i It is the duty. of the ,legal owner to transfer ,to the equitable owner his r;ightful share of the .property. The exact mutual rights of part, owners (jfa patenthav;e never yet been authoritatively settled. If,one part owner derives a profit from the patent, either by using the invention, or getting royalties for its use, or purchase money fQr sale ,of rights, it would seem that he ,should be accountable to the Qtherpart owners for their portion of such profit. And probably a bill for.a,n account would be sustained therefor. But this is matter of mere specnlation, So far-as this ease is concerned. It is olear, I think, that one part owner cannot maintain suit against another for infringement. :, The bill is dismissed, with
ASPINWALL MANUF'G
Co. v.
GILL
another·.
(OirtJ'/j,it Oourt, D. New J'er8eY. JulV 18, 1887.) ,-', 'i PATENTS FOR INVENTIONS-LICli:NSE-INJ'UNCTION.
Where it appears that a has a license from the inve,u,tor and. pano injunction will tentee to make, use, and vend 100 patent potato, be decreed to restrain the exerci.se of the license untIl he has fully enjoyed it; and where it appearedtha1i defendant; under 8\1ch license, had only made 50 machines, the should be; qenied.
On Bill in Equity. On, digger patents. Pranci8 Fot'bes, for contplainant. F. a. Inwthorp, Jr., for d.efeij.dant.