Opinion of the court.

if not approved, or the terms of purchase offered by plaintiffs should be such as defendants would not accept, then plaintiffs should have leave to take off their machine at their own expense; that afterwards, when the plaintiffs' terms were asked, they said defendants should have the machine on the same terms as the steamboat Augusta, and other boats, but would not then, or at any other time, state definitely what those terms were, or what price the Augusta had given, or the plaintiffs would be willing to take, so that it could be laid before the company for their approval; that defendants had never refused permission to plaintiffs to take away the machine from the boat, if they so desired to do. Certain letters were also given in evidence, the contents of which it is not necessary to state, in order to understand the instructions given to the jury, which are now the subject of exception.

Four several bills of exception have been taken to the refusal of the court to give four items of instruction of the jury. Two of these only are relied on here. The first may be briefly stated thus: That if the jury believed the testimony of William Gunton, and that the contract between the parties was such as he stated, defendants were entitled to a verdict. This instruction was refused by a divided court.

We are of opinion that the defendants were clearly entitled to have this instruction given to the jury, as the testimony, if believed by them, fully supported the defendants' plea, and showed that the plaintiffs were not entitled to recover on either count in their declaration. They could not recover on the first count, for this testimony showed that there was no such contract between the parties as that set forth in it; nor on the count on a quantum meruit for the use of the machine, for that would be a repudiation of the contract as proved. If the plaintiff's put their machine on board of defendants' boat for the purpose of experiment, on an agreement that defendants should pay for it if, on trial, they approved it, and were willing to give the price asked, otherwise the plaintiffs should have leave to take it away, it certainly needs no argument to show that, without stating their terms, or offering to fulfill their contract by a sale of the machine, the plaintiffs cannot repudiate it and sue for the use of the machine. This would be a palpable fraud on the defendants.

The only other exception urged to the charge of the court below is in the answer given by the court to the fourth instruction prayed, which is as follows:

66

If, from the evidence, the jury shall find that William Gunton, the president of the defendants' company, and acting as their general agent, made with the plaintiffs the contract set out in the first count

البد

Opinion of the court.

of the said declaration, and that the plaintiffs, under the said contract, put the said machine on the defendants' boat, and the same was used by the defendants at the time and times mentioned in the said count, and that the same was beneficial to the defendants, then the plaintiff's are entitled to recover on the said first count, notwithstanding the jury shall find that the terms of the said contract were not communicated to the defendants, and the said William Gunton reported to the said defendants a different contract."

We find no fault with this instruction, so far as it states the liability of defendants for the acts of Gunton as their general agent, whether he reported his agreement to the defendants or not. If he was their general agent, and had power to make such contract, his failure to communicate it to his principals cannot affect the case. But we are of opinion that the court erred in stating that the plaintiff's had a right to recover on their special count, if the machine was useful to the defendants, without regarding the stipulations of said contract as laid and proved, and the fact that the plaintiff's had refused to rescind it, and had expressed their determination to adhere to it and "to bring an action every week to recover the amount of saving on the terms of the contract."

If the plaintiffs had complied with the request of the president of the company, in a letter addressed to them on the 14th of April, 1841, after the dispute about the nature of the contract had arisen, and taken their cut-off from the boat, and thus put an end to the contract, the instructions given by the court would have been undoubtedly correct. But as the record shows that the plaintiffs have refused to annul the contract, a very important question arises-whether this action, and five hundred others which the plaintiffs have expressed their determination to continue to institute, can be supported on this one contract. By the contract as proved and declared on, the defendants, after the machine has been erected on their boat, are to continue to use it during the continuance of the patent," if the boat should last so long. The compensation to be paid by the defendants is to be measured by the amount of saving of fuel which the machine shall effect. The mode of ascertaining this saving is pointed out, and the ratio in which it is to be divided. The first $250 saved are all to go to the plaintiffs, and three-fourths of all the balance. But the contract is wholly silent as to the time when any account shall be rendered or payments made. The defendants have not agreed to pay by the trip, or settle their account every day, or week, or year, or at the end of 27 weeks, the time for which this suit is instituted. The agreement on the part of the plaintiffs is, that the defendants

66

Syllabus.

shall use their machine for a certain time, in consideration of which defendants are to pay a certain sum of money. It is true, the exact sum is not stated; but the mode of rendering it certain is fully set forth. It is one entire contract, which cannot be divided into a thousand, as the plaintiffs imagine. If the defendants had agreed to pay by installments at the end of every week, or twenty-seven weeks, doubtless the plaintiffs could have sustained an action for the breach of each promise, as the breaches successively occurred. But it is a well-settled principle of law, that "unless there be some express stipulation to the contrary, whenever an entire sum is to be paid for the entire work, the performance or service is a condition precedent; being one consideration and one debt, it cannot be divided." It was error, therefore, to instruct the jury that the plaintiff's were entitled to recover on the first count, if their machine was used by the defendants, and was beneficial to them, without regard to the fact of the rescission, or continuance, or fulfillment of the contract on the part of the plaintiffs.

Whether, if there had been a count in the declaration for the $242, and the jury had believed that the defendants had agreed to pay it as soon as it was earned, the plaintiffs might not recover to that amount, or whether such a construction could be put on the contract as proved, are questions not before us, and on which we therefore give no opinion.

The judgment of the Circuit Court must therefore be reversed.

ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the District of Columbia, holden in and for the county of Washington, and was argued by counsel; on consideration whereof, it is now here ordered and adjudged by this court, that the judgment of the said Circuit Court in this cause be, and the same is hereby, reversed with costs, and that this cause be, and the same is hereby, remanded to the said Circuit Court, with directions to award a venire facias de novo.

CHARLES J. GAYLER AND LEONARD BROWN, PLAINTIFFS IN ERROR, v. BENJAMIN G. WILDER.

(10 Howard, 477.)

1. An assignment of a patent-right, made and recorded in the Patent Office before the patent issued, which purported to convey to the assignee all the inchoate right which the assignor then possessed, as well as the legal title

Statement of the case.

which he was about to obtain, was sufficient to transfer the right to the assignee, although a patent afterwards was issued to the assignor.

2. When an assignment is made, under the fourteenth section of the act of 1836, of the exclusive right within a specified part of the country, the assignee may sue in his own name, provided the assignment be of the entire and unqualified monopoly. But any assignment short of this is a mere license, and will not carry with it a right to the assignee to sue in his own name.

3. Therefore, an agreement that the assignee might make and vend the article within certain specified limits, upon paying to the assignor a cent per pound, reserving, however, to the assignor the right to establish a manufactory of the article upon paying to the assignec a cènt per pound, was only a license; and a suit for an infringement of the patent-right must be conducted in the name of the assignor.

4. Where a person had made and used an article similar to the one which was afterwards patented, but had not made his discovery public, using it simply for his own private purpose, and without having tested it so as to discover its usefulness, and it had then been finally forgotten or abandoned, such prior invention and use did not preclude a subsequent inventor from taking out a patent.

THIS was a writ of error to the Circuit Court of the United States for the Southern District of New York.

The defendant in error, who was plaintiff in the court below, brought an action against Gayler and Brown, the plaintiffs in error, for an alleged infringement of a patent-right for the use of plaster of Paris in the construction of fire-proof chests.

In the declaration, it was averred that one Daniel Fitzgerald was the original and first inventor of a new and useful improvement in fire-proof chests or safes, and that letters patent were granted him therefor, bearing date the 1st day of June, 1843. The patent was in the usual form, and was set out in the declaration, the specification annexed to which was as follows:

"To all whom it may concern: Be it known, that I, Daniel Fitzgerald, of the city, county, and State of New York, and a citizen of the United States, have discovered and made an improvement, new and useful, in the construction of iron chests or safes, intended to resist the action of fire, and for the safe-keeping and preserving books and papers, and other valuables, from destruction by fire, which I call a Salamander safe or chest.

"The following is a full and exact description of the safe or chest, with my improvement combined therewith:

"I make two iron chests, in the common and ordinary way of making iron chests, which is well known to those engaged in this branch of business, one smaller than the other, which, when the safe is put together, forms the inner chest, or inner part of the safe. The

Statement of the case.

other chest is made about three inches larger than the inner one, and so as, when put together, it will form the outer part or crust of the safe, and leave a space between the inner and outer chests of the safe of about three inches, which space may vary a little, more or less, when the chests are put together, but should be the same all round and in every direction. The inner and outer doors, where two doors are used, are prepared in the same way, leaving a space, as above, between the inner and outer crust of each door, which space is left for a like purpose with that left between the inner and outer chest of the safe. Where one door is used, it should be made in the same manner, leaving a like space between the inner and outer crust or face of the door, and for a like purpose, and should be fitted to the chest or safe with great accuracy. The edges and openings for the doors are to be neatly finished, as in other chests. I then take plaster of Paris or gypsum, and, having boiled it or baked it in an oven, and calcined it, and reduced it to a powder, I mix it with water till it is about the consistency of cream or thin paste, so fluid as that it may readily be poured into the space left as above to receive it, and I then fill all the space with the plaster of Paris, putting in some sheets of mica between the inner and outer chest, to aid, if neces sary, in checking the progress of the heat.

"But where pains are taken to have all the space left for the purpose properly filled with the plaster of Paris, as above, so that when set it will expand and adhere firmly to the surrounding parts, and completely fill the whole space, and all the cracks and joints, the mica may be dispensed with, and every other substance, and the plaster may be used alone. It may also be reduced to a powder, without being prepared as above, and used in that state; but I have not found it as good.

"The inner case or chest may be made of wood instead of iron, as for a book-case, and if the space left between that and the outer chest be filled in the manner and with the materials above named, it will make a very durable safe, that will effectually resist the fire, as I have found by experience; but the safe may not be so strong or durable, though somewhat cheaper.

"The above composition or preparation of gypsum may be mixed with several other articles not contrary to its nature, with a view to increase its efficacy in resisting the action of fire; but, from my experience, I doubt if they have much effect. The gypsum alone, when properly prepared and properly placed in the space left to receive it, and made to fill it completely, is quite sufficient to resist, for a long space of time, the most inteuse heat. The chemical properties of