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written assignments of patents, are inadmissible as foundations for actions for damages based on alleged invalidity of those patents; but such parol statements may be admissible as aiding to prove fraud, in a case where other evidence shows that the assignor knew the patent to be invalid, when he made the assignment. In such a case, however, the assignee's right of action rests upon the fraud and not upon the parol warranty.' It follows, therefore, that the parol warranties of validity which sometimes accompany assignments of patents, have little legal value.

§ 285. Equitable titles to patent rights may arise in a number of different ways. Such a title accrues to an assignee when a patent is granted to an inventor, or to a subsequent assignee chargeable with notice," for an invention made or completed or patented, after the execution of an assignment adapted to convey it; and a document which conveys a patent, and which also purports to convey all improvements on the invention covered thereby which may thereafter be made by the assignor, is an example of such an assignment. Such a title accrues to an inventor when a patent is granted to his assignee, in pursuance of an assignment, which was accompanied by a contract providing that the assignee should pay to the inventor all or some portion of the proceeds of the patent.' Such a title accrues to an assignee of a term for years, in a patent right, if that term is limited to expire before the expiration of the existing term of the patent. Such a title accrues to a consolidated corporation in patents owned by its constituent corpo

Van Ostrand. Reed, 1 Wendell, (N. Y.) 432, 1828; Jolliffe v. Collins, 21 Missouri, 341, 1855.

* McClure. Jeffrey, 8 Indiana, 83, 1856.

Rose v. Hurley, 39 Indiana, 78, 1872.

✦ Littlefield v. Perry, 21 Wallace, 226, 1874; Nesmith v. Calvert, 1 Woodbury & Minot, 34, 1845; Con

tinental Windmill Co. v. Empire
Windmill Co. 8 Blatch. 295, 1871.
5 Pontiac Boot Co. v. Merino Shoe
Co. 31 Fed. Rep. 286, 1887.

Aspinwall Mfg. Co. v. Gill, 32
Fed. Rep. 699, 1887.

Sayles v. Dubuque & Sioux City Railroad Co. 5 Dillon, 563, 1878. 8 Cook v. Bidwell, 8 Fed. Rep. 452, 1881.

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rations.' And such a title will doubtless arise out of any contract which purports to give a person a beneficial interest in a patent right; but which does not amount to an assignment or grant of legal title, nor to a license to make, to use, or to sell the invention. So also, any facts which would create a constructive or a resulting trust, if they related to other kinds of intangible personal property, will doubtless have the same effect upon property in patents, when they relate thereto.

§ 286. In whatever way an equitable title to a patent right may have arisen, it will be translated into a legal title, in a proper case' by means of a bill for specific performance of contract or other action in equity; and where no affirmative relief is sought by the holder of an equitable title to a patent, such a title will be upheld by a court of equity, as against all claims made under the naked legal title. But if the holder of the legal title assigns the patent to a purchaser for a valuable consideration, without notice of the equitable title; such a purchaser will take the entire ownership of the patent, freed from the prior equitable encumbrance. One district judge has decided this point the other way, holding that the maxim caveat emptor applies to such a case. But that decision was rendered before that in Hendrie v. Sayles; and was made in evident forgetfulness of the really applicable maxim that, "between equal equities the law will prevail;" and of the well established doctrine, that, if a purchaser for a valuable consideration without notice of a prior equitable right, obtains a legal title at the time of his purchase, he will be entitled to priority in equity, as well as in law." The maxim of caveat

Edison Electric Light Co. v. New Haven Electric Co. 35 Fed. Rep. 236, 1888.

2 Kennedy v. Hazleton, 128 U. S. 667, 1888.

Hapgood v. Rosenstock, 23 Fed. Rep. 87, 1885; New York Paper Bag Machine Co. v. Union Paper Bag

Machine Co. 32 Fed. Rep. 783, 1887. 4 Hendrie v. Sayles, 98 U. S. 549, 1878.

5 Consolidated Fruit Jar Co. v. Whitney, 2 Bann. & Ard. 385, 1876. Bispham's Principles of Equity, Section 40.

emptor applies where a seller has no title whatever.' When a seller has the legal title, but not the equitable, then the other maxim governs the rights of assignees.

The

§ 287. A grant, from one person to another, of a patent right is a conveyance in writing of the entire right, or of an undivided interest therein, within, and throughout a certain specified portion of the territory of the United States. subject matter of a patent right is not divisible in any other category than a territorial one;' and therefore grants cannot be made to convey one of several inventions covered by a claim; nor to convey an exclusive right to make, use and sell a patented invention for one of several purposes to which it is applicable. The rules which relate to the form, authentication, construction, revocation, reformation and effect of assignments, refer with equal force to grants; except as otherwise stated or implied in this section, and except as the explained nature of a grant clearly indicates otherwise. In addition to those rules, there are several which refer to grants and not to assignments; and to the latter, it is now in order to attend.

A grant is not void for ambiguity where it purports to convey all of the territory of the United States except a number of counties theretofore conveyed to others, but not specified in the grant; because the reservation is such an one as is capable of being made certain by competent evidence. It is not inconsistent with the character of a document as a grant, that it contains a clause of forfeiture in case of non-payment of royalties, or a clause providing that the grantor shall prosecute and defend suits relating to the exclusive right granted. Nor is it inconsistent with a grant,

Abbett v. Zusi, 5 Bann. & Ard. 38, 1879.

2

Gayler . Wilder, 10 Howard, 494, 1850; Moore . Marsh, 7 Wallace, 521, 1868; Littlefield v. Perry, 21 Wallace, 219, 1874.

Goodyear v. Railroad Co. 1 Fisher, 627, 1853; Suydam v. Day, 2

Blatch. 21, 1846; Washing Machine Co. v. Earle, 3 Wallace, Jr. 320, 1861.

4 Washburn & Moen Mfg. Co. v. Haish, 4 Fed. Rep. 908, 1880

Littlefield v. Perry, 21 Wallace, 220, 1874.

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that the document limits the exercise of the exclusive right, to the making, using and selling of a particular number of specimens of the patented invention involved.' But no instrument can be a grant which reserves a right to the grantor, to sell specimens of the patented thing within the territory covered thereby; though it reserves him no right to make or to use any such specimen within that territory.'

§ 288. A grant of an exclusive right to make, use, and sell a particular patented invention within a particular part of the United States, confers the right to use, anywhere within the United States, those specimens of that invention which are made and sold under the grant, and within the territory covered thereby.' This point was established in a case where the patented article was capable of being used but once; but in another case which supports it, the rule was applied, though the thing covered by the patent was capable of repeated uses. It was a remark of Sir Francis Bacon, that: "It is the vice of subtle minds to attach too much importance to slight distinctions." Such a mind may possibly hold that Judge SAWYER was not justified in disregarding the distinction just mentioned. But Judge SAWYER took still a further step in the case last cited. He refused to enjoin the defendant from selling, west of the Rocky Mountains, those specimens of the patented invention which were lawfully made and sold east of that landmark; though the complainant was the sole grantee of all the territory which he sought to protect from intrusion. On the other hand, Judge MCKENNAN,' and Judge WHEELER,' have held that a grant of an exclusive right to make, use, and sell a particular patented invention within a particular part of the United States, confers no right to sell, in any other part

1 Wilson v. Rousseau, 4 Howard, 646, 1846; Washburn v. Gould, 3 Story, 122, 1844; Ritter v. Serrell, 2 Blatch. 379, 1852.

2 Pitts v. Jameson, 15 Barbour (N. Y. Supreme Court), 315, 1853.

3 Adams v. Burke, 17 Wallace, 453,

1873; McKay v. Wooster, 2 Sawyer, 373, 1873.

4 Hatch v. Adams, 22 Fed. Rep. 434, 1884.

5 Hatch v. Hall, 22 Fed. Rep. 438, 1884; Hatch v. Hall, 30 Fed. Rep. 613, 1887.

of the United States, any specimen of that invention which was made and sold under the grant, and within the territory covered thereby.

$289. A creditor's bill may operate to transfer a complete title, or an equitable title, to a patent right, whenever a judgment is obtained against its owner, and an execution issued on that judgment, is returned nulla bona; and the court in which the creditor's bill is filed may appoint a trustee to execute a proper assignment.' But a suit, instituted by the filing of such a bill, is not a patent suit in such a sense as to confer jurisdiction on a Federal court." Where jurisdiction is not conferred upon those courts by variant citizenship, or other cause known to the law, it will be necessary to proceed in the courts of the States. In such of the States as have preserved equity pleadings and proceedings, a creditor's bill is the proper document to file in such a court, when pursuing such relief; but in the States which have adopted codes of civil procedure, in place of the common law and equity plans of judicature, the end in view may be reached by what are called proceedings supplementary to executions.'

4

§ 290. Adjudication of bankruptcy and appointment of an assignee, operated, under the bankrupt law of 1867, to vest in such assignee, all patent rights of the bankrupt and all rights of action based thereon, except such as were held in trust by him, and except such as were exempted from attachment, or seizure, or levy on execution by virtue of the laws of the United States, or by virtue of the laws of the State in which the bankrupt had his domicile at the time of the commencement of the bankruptcy proceedings." Though this bankruptcy law was repealed in 1878, many titles, to patent rights now in force, were transferred by its opera

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