Tyler et al. v. Tuel. 6 Cranch.

lege in, unto, and over the said improvement in the said patent described, and thereby vested in the said Benjamin, in any part of the United States, excepting in the counties of Chittenden, Addison, Rutland, and Windham, in the State of Vermont."

The second count, omitting the recital of the statutes and of the patent, stated concisely the same facts. The averment of the assignment of the patent-right was as follows: "And the said Benjamin Tyler, afterwards, and before the expiration of the said fourteen years, to wit, at said Claremont, on the 15th day of May, in the year last aforesaid, by his certain deed of that date by him then and there signed, sealed, and to the plaintiffs delivered, assigned to the plaintiffs the full and exclusive right and liberty of making, constructing, using, and vending to others to be used, the said improvement, in and throughout the United States, excepting in the counties of Chittenden, Addison, Rutland, and Windham, in the State of Vermont, as fully and amply as by said letters-patent the said Benjamin Tyler was thereto entitled, and all his title and interest in and unto said improvement, excepting as aforesaid."

Hubbard, for the defendant, contended that the assignment, being of part of the patent-right only, was not such as would authorize the assignees to maintain an action on the statute. Laws U. S. vol. 2, p. 202, § 4, 5.

The fourth section of the act declares, "that it shall be lawful for any inventor, his executor or administrator, to assign the title and interest in the said invention, at any time, and the assignee, having recorded the said assignment in the office of the Secretary of State, shall thereafter stand in the place of the original inventor, both as to right and responsibility, and so the assignees of assigns to any degree."

The fifth section provides, "that if any person shall make, devise, and use, or sell the thing so invented, the

Tyler et al. v. Tuel. 6 Cranch.

[* 326] * exclusive right of which shall, as aforesaid, have been secured to any person by patent, without the consent of the patentee, his executors, administrators, or assigns, first obtained in writing, every person so offending shall forfeit and pay to the patentee a sum that shall be at least equal to three times the price for which the patentee has usually sold or licensed to other persons the use of the said invention; which may be recovered in an action on the case founded on this act, in the Circuit Court of the United States, or any other court having competent jurisdiction."

It is evident from the whole purview of the statute, especially from the 4th, 5th, 6th, and 10th sections, that no person can be considered as an assignee under the statute, who is not the assignee of the whole right of the original patentee.

Rodney, Attorney-General, contrà.

Upon a motion in arrest of judgment, if the judges are divided, the motion fails, and the judgment must be entered of course. It must follow the verdict, unless sufficient cause be shown to the contrary. 1 Salk. 17. Ld. Raym. 271. 3 Mod. 156.

If there can be no assignment but of the whole right, then the exception of particular counties is void; it being repugnant to the prior words and intention of the grant.

So if the jury find a fact inconsistent with a fact previously found, the latter fact shall be rejected. Cro. Car. 130; 3 East; 6 Bac. Abr. 381; Plowd. 564; 1 Bl. Com. 89; 2 Co. 83; 8 Co. 56; Dyer, 351; 1 Co. 3; 1 Vent. 521; Cro. Eliz. 244.

The whole passed at law by the deed of assignment. The exceptions are in the nature of equitable assignments.

On a subsequent day, the Court directed the following opinion to be certified to the circuit court for the district of Vermont, viz.:

Park v. Little & Wood. 3 Wash.

*It is the opinion of the Court, that the plain- [* 327 ] tiffs, by their own showing, are not legal assignees

to maintain this action in their own names, and that the judgment of the Circuit Court be arrested.

PARK V. LITTLE & WOOD.

[3 Wash. 196.]

Action for an infringement of the plaintiff's patent-right to alarm-bells for fireengines. The defendants opposed the claim, because the plaintiff had given the use of his invention to the Philadelphia fire company-that the invention is not an alarm-bell, as mentioned in the patent, nor a hose or fireengine that their bells differ in principle with the plaintiff's. The plaintiff, not having assigned the whole of his title and interest in the invention, and no deed of assignment being recorded in the office of the Secretary of State, may recover, notwithstanding any agreement to assign. The question, whether the invention is new, will be decided, not by the fact that bells are not new, but whether the mode of ringing them, by the motion of the engine, and not by manual action, is new.

The thing for which the patent is granted should be truly and fully described in the specification. The matters not disclosed must appear to have been concealed for the purpose of deceiving the public.

If an invention is an improvement in the principle of a machine for which a patent has been granted, it is not a violation of the patent-if it is an improvement in the form, it is such a violation.

ACTION for the violation of the plaintiff's patent-right to alarm-bells for fire-engines.

The specification states the bell to be attached to a horizontal piece of iron, fixed into an upright elastic piece, the vibrations of which are regulated by a ball of four or five pounds on the top-the whole frame being fastened on the engine, and the bell made to ring by the motion of the wheels on which the engine is fixed. These bells were used on the Philadelphia fire hose engine, for whose use the plaintiff particularly intended it, for the purpose of informing the mem

Park v. Little & Wood. 3 Wash

bers, at night, where to find it.

The defendants, being

members of another hose company, erected on that engine a frame somewhat like gate-posts, with a post across, [197] to which were suspended two bells, attached, like the house-bells, to a circular elastic spring. This

is the alleged violation.

The objections to the plaintiff's recovery were: -1. That his counsel stated, in the opening, that plaintiff had given the use of his invention to the Philadelphia fire company. 2. That this is neither a new nor a useful invention. 3. That it is called, in the patent, an alarm-bell for a fire-engine; whereas, it is not intended to give an alarm, but merely to distinguish the members of the Philadelphia company from other companies; and that a hose engine is not a fire-engine. Some other objections were made to the specification. 4. That the bells used by the defendants are on an entirely different principle from those of the plaintiff.

WASHINGTON, J., charged the jury. First point: The plaintiff is entitled to recover at law, no matter what private agreement subsists between him and any other person or persons, unless he has made a legal assignment and transfer of his interest in the invention: now, in this case, it does not appear that such an assignment has been made.

2. Whether this is a new and useful invention, you must decide. But the question is not, whether bells to give alarm or notice are new, but whether the use and application of them to fire-engines, to be rung, not by manual action, but by the motion of the carriage, for the purpose of alarm or notice, is a new invention, or improvement of an old one? The power of steam is not new, and yet its application for propelling boats would be considered as such. Nevertheless, you must decide, on the evidence, whether the application of these bells to fire-engines is new. As to the question of its

Park v. Little & Wood. 3 Wash.

utility, it is proved that the plaintiff has received fifty dollars from one fire company in Baltimore for the privilege of using his invention; and the fire insurance companies of this city, by voting sums of money to the Philadelphia company, on account of their using them, is some evidence of their opinion.

* 3. This is called, in the patent, an alarm-bell; [* 198] and so it certainly is, so far as it may give notice of a fire to the inhabitants, and to the members of the company of the engine to which they belong. A hose engine may as properly be called a fire-engine, as any other used for extinguishing fire. It is true, that the thing for which the patent is granted should be truly and fully described in the specification; but if this is done, so as clearly to distinguish it from all other things before known, and so as to enable any person skilled in the art of which it is a branch, or with which it is most nearly connected, to make and use the same, it is sufficient; the matters not disclosed must appear to have been concealed for the purpose of deceiving the public, to invalidate the patent.

4. The last question is, have the defendants, by the devising or using their bells, violated the plaintiff's right? The inquiries under this head are 1st. Are the defendants' bells, as used by them, an improvement of the plaintiff's? You have seen and tried both, and can decide. 2d. Is it an improvement in the principle or in the form? If the former, then it is no invasion of the plaintiff's privilege; if the latter, it is.

Verdict for defendants.