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ted States, by which there was granted, &c. The law prescribed that it should be delivered to the petitioner, and no person could take it till he had taken the oath and made the disclosure required in the second section of the law of 1793. The omission of this averment was held to be fatal on general demurrer.14
The phraseology of the act of 1793 differs a little from that of 1836 on this subject: the expressions made out, and issued, are not contrasted in the latter as in the former. Whether the above construction will be applied to the latter law, remains to be determined.
4. As to the statement of what is granted by the patent, where in an action for an infringement, the patent was recited in the declaration, but the specification, which was referred to in the patent as a part of it, was not recited, it was objected, in arrest of judgment, that the subject of the patent was not sufficiently described. But Mr. Justice Washington said the specification was matter of evidence to be used at the trial, and if a sight of it were necessary to the defence, the defendant might have had it placed upon the record by asking oyer of it, and
14 Cutting and others Exr's. of Fulton v. Myers, Coxe's Dig. 531; 4 Wash. C. C. R. 220.
that, at any rate, the defect, if any, was cured by verdict.15
5. On the subject of setting forth an assignment, a question respecting the averment of the recording occurred in an action for the infringement of the patent right of Williston's double reflecting bakers, brought by the assignee in his own name, in which case it was averred that Williston obtained a patent and exercised and enjoyed the right under it till June 20, 1831, and that he, by writing, under his hand of that date, sold and conveyed all his right and claim in said patent right to one John Robinson, as by said assignment in writing, in court to be produced, would fully appear, whereby said John Robinson, as assignee of said Williston, became, and was the true and lawful owner of said right, with the full and sole power in him and his assigns to make, use and vend the said improvement agreeably to the statutes aforesaid recited; and that Robinson exercised, used and enjoyed the right until the 29th of July, 1831, when, by assignment of that date, under his hand and seal, and in court to be produced, he granted, sold and conveyed all his right, title and interest in the said letters-patent, and the improvement therein specified and set forth, to the plaintiff, and that the plaintiff, from the time of making said last mentioned assign
"Gray & Osgood v. James and others, 1 Pet. C. C. R. 482.
ment had exercised, used and enjoyed the right, by himself, servants and deputies, to the time of bringing the action. The general issue being pleaded, a verdict was rendered for the plaintiff. The defendant then moved, in arrest of judgment, that the recording of neither assignment-the recording of both of which was necessary in order to give the plaintiff the whole right and enable him to bring an action in his own name,—was averred in the declaration.
Story J. "We are of opinion that the motion in arrest of judgment ought to be overruled. We accede to the doctrine stated at the bar, that a defective title cannot, after verdict, support a judgment, and, therefore, it constitutes a good ground for arresting the judgment. But the present is not such a case, but is merely the case of a good title defectively set forth. The defect complained of is the omission to state, that the assignments, on which the plaintiff's title is founded, were recorded in the office of the department of state; which is made essential to pass the title of the original patentee by the fourth section of the patent act of February 21, 1793, ch. 55. The general principle of law is, that where a matter is so essentially necessary to be proved to establish the plaintiff's right to recovery, that the jury could not be presumed to have found a verdict for him, unless it had been proved at the trial, there the omission to state that matter in express terms in the declaration, is cured by the verdict, if the gen
eral terms of the declaration are otherwise sufficient to comprehend it. This was the doctrine of Lord Ellenborough in Jackson v. Pesked,16 and it is very elaborately expounded by Mr. Sergeant Williams in his learned note to 1 Saund. R. 28, a. Now it seems to me that taking the whole declaration together, (however inartificially drawn,) the plaintiff sets up a title by the patent right by assignment, and the enjoyment and use of the right under that title, and that he has been injured in that right under that title by the piracy of the defendants. This cannot be true, nor could a verdict have been found by the jury, if the deeds of assignment had not been duly recorded, for unless that was done, nothing would pass by the deeds. The cases of Hitchins v. Stevens," and McMurdo v. Smith,13 cited at the bar, seem to us very strongly in point. So is France v. Tringer. There are stronger analogous cases in equity, for it has been held that if a feoffment is stated without any averment of livery of seizin, or a bargain and sale without stating an enrollment, it is not a good cause of demurrer, but the court will intend it perfect.20 As to the livery of seizin, it is far from being certain that if á feoffment is, in terms,
proved, it is necessary, even at law, to aver It, since it is implied.21 Upon the whole, judgment must be entered for the plaintiff according to the verdict."'22
6. As to the averment of the infringement, it is sufficient to allege it in as broad terms as the declaration, and the specification in the patent.23
One allegation is necessary in the declaration in England, which we omit; namely, that of the enenrollment of the specification in the chancery office within the time prescribed in the letters-patent,24 since no such subsequent enrollment is made with us, the specification being a part of the patent.
Sec. IV.-PLEA. DEFENCES. NOTICE Of Defence.
In defence in an action for an infringement the defendant may deny that the patentee made the invention for which the letters-patent were granted, or that the invention was useful; that such letters-patent were granted; or allege defects in the specification; or deny that the letters-patent were assigned to the
21 See Co. Litt. 303-6; Throckmorton v. Tracey, Plowd. R. 149. See Spieres v. Parker, 1 T. R. 145, per Buller J.; 1 Saund. Rep. 228, a. Williams's note.
22 Dobson v. Campbell, 1 Sumner's R. 319.
23 Cutting and others Exr's. of Fulton v. Myers, Coxe's Dig. 531. S. C.4 Wash. C. C. R. 220.
24 1 W. Saunders, 189, n. 2; and see id. 187,271, and Saund. Pl. & Ev. 635.