and express licensees, but any person having the right to sell may at the time of sale restrict the use of his vendee within specific boundaries of time or place or method, and these will then become the measure of the implied license arising from the sale. But when the sale is unconditional, as is the case in ordinary sales by authorized vendors in open market, the implied license gives to the purchaser and his vendees the unrestricted right to use the article unless such use infringes some other patent than the one by which the article itself has been protected.9 the transfer of any interest in the patent. The conclusion, therefore, is, that whatever right to use the patented machine a defendant in an execution may have passes with the machine when sold by the sheriff to his vendee." 23 O. G. 831 (832). That where the owner of a patent consents to the sale of the patented invention under an execution, the purchaser has an implied license, see Detweiler v. Voege (1881), 19 Blatch. 482; 8 Fed. Rep. 600. That a foreclosure sale of a patented device, to which the patentee is a party, frees the device from the monopoly, see Detweiler v. Voege (1881), 8 Fed. Rep. 600; 19 Blatch. 482. 8 In Dorsey Revolving Harvester Rake Co. v. Bradley Mfg. Co. (1874), 12 Blatch. 202, Woodruff, J. (204) "I have no doubt of the right of a patentee to grant the right to make and sell the patented invention within specified territory, and to make that right exclusive in the grantee, and yet limit the use of the thing so made and sold within specified limits." 1 Bann. & A. 330 (332). That a patentee may sell a patented article with restrictions as to its use, and these will bind the vendee, see Holliday v. Matheson (1885), 31 O. G. 1444; 24 Fed. Rep. 185; 23 Blatch. 239. 9 In American Cotton Tie Co. v. Simmons (1878), 3 Bann. & A. 320, Shepley, J.: (321) "The company clearly had the right, in selling a patented article, to put a restriction on its use or sale, and to convey only a restricted title, or to license only a restricted use, and the purchaser under such a restricted title could not convey a greater or better title than he had himself. The law upon this subject was fully stated in Hawley v. Mitchell, 1 Holmes, 42, and affirmed in the Supreme Court of the United States, 16 Wall. 544. But when the proprietor of a patented article sells it for the purpose of allowing it to be used in the ordinary pursuits of life, and to pass into the market of the country as an ordinary article of commerce, and subject to unrestricted purchase and sale, he waives his right to affix conditions or restrictions to its use or sale, and consents that, after one sale and the payment of one royalty, it shall pass out of the limits of the monopoly." 13 O. G. 967 (968). That the unconditional sale of a patented article confers the whole title to it upon the vendee, and impliedly warrants full ownership in the vendor and a good title everywhere, though the sale were made abroad, see Holliday v. Matheson (1884), 30 O. G. 452. § 825. Implied License: License to Use not Implied from Sales unless the Invention Sold and the Invention Used are Identical. The sale from which this universal license is implied must, moreover, be a sale of the precise article covered by the patent. A purchaser of the materials of which an article consists, or of the elements of which it is combined, obtains thereby no right to make and use the article, or to unite the elements and employ them in the combination, although the vendor is the owner of the patent in which the combination or the article is claimed. To this rule there is one exception. The sale of any object which can be used only in constructing a patented article, or in practising a patented art, is presumed to have been intended both by the buyer and seller, for that specific use; and when the seller is the owner of the patent for the article or art, his act of sale confers a license on the purchaser to employ the object for that purpose.1 In order that the license may be implied in other cases the licensed article must be the subject-matter of the sale. Though the article has once been lawfully sold, if it is broken up and ceases to exist in its entirety, a purchaser of its severed parts obtains no right to reconstruct and use it.2 But it is not im § 825. In Roosevelt v. Western Electric Co. (1884), 20 Fed. Rep. 724, Wallace, J. (724) "The purchase of a patented article from the patentee or owner of the patent confers upon the buyer the right to use the article to the same extent as though it were not the subject of a patent; but the sale does not import the permission of the vendor that it may be used in a way that will violate his exclusive property in another invention. Where the article is of such peculiar characteristics that it cannot be dealt in as a trade commodity, and cannot be used practically at all, unless as a part of another patented article of the vendors, it would be preposterous to suppose that the parties did not contemplate its use in that way. It would be against good conscience to allow an injunction to a vendor under VOL. II. 40 such circumstances. He would be estopped from asserting a right which the purchaser must have understood him to waive." 28 O. G. 812 (812). That the purchaser of a machine covered by one patent does not, by using it, infringe a patent owned by the same party for a process which consists in the use of the machine, see Downton v. Yaeger Milling Co. (1879), 17 O. G. 906; 5 Bann. & A. 112; 1 McCrary, 26. That the sale of a machine, in which needles covered by a different patent of the same patentee are used, carries a license to use those needles until they are used up, but not to replace them, see Aiken v. Manchester Print Works (1865), 2 Clifford, 435. 2 That where an old licensed machine is broken up and sold at auction, portant under what name the article is made the subject of the sale. The sale of the complete article by one who owns a patent for the materials of which it is composed, or of a combination by the patentee of its essential elements, carries a license to employ the materials in the article, or the elements in combination, and to use them, thus united or combined, without restriction.3 § 826. Implied License: Right to Use Unlimited as to Time, Territory, Method, and Quantity. This implied license of the purchaser and his vendees includes the right to use and the right to repair and the right to sell. His right to use is unlimited in duration. It continues not only during the original term of the patent, like the right under an express license, but unlike the right under an express license it subsists during an extension, even though such extension be conferred by special act of Congress. It is the purchaser has no right to use it, see Wortendyke v. White (1875), 2 Baun. & A. 25. 8 That the license extends to the materials of which the article sold is composed, see Goodyear v. Beverly Rubber Co. (1859), 1 Clifford, 348; cited in § 824, note 2, ante. § 826. 1 In Adams v. Burke (1873), 17 Wall. 453, Miller, J.: (455) "We have repeatedly held that where a person had purchased a patented machine of the patentee or his assignee, this purchase carried with it the right to the use of that machine so long as it was capable of use, and that the expiration and renewal of the patent, whether in favor of the original patentee or of his assignee, did not affect this right. The true ground on which these decisions rest is that the sale by a person who has the full right to make, sell, and use such a machine carries with it the right to the use of that machine to the full extent to which it can be used in point of time." 5 O. G. 118 (119). In Mitchell v. Hawley (1872), 16 Wall. 544, Clifford, J.: (546) Patentees acquire by their letters-patent the exclusive right to make and use their patented inventions and to vend the same to others to be used for the period of time specified in the patent, but when they have made one or more of the things patented, and have vended the same to others to be used, they have parted to that extent with their exclu. sive right, as they are never entitled to but one royalty for a patented machine; and consequently a patentee, when he has himself constructed a machine and sold it without any conditions, or authorized another to construct, sell, and deliver it, or to construct and use and operate it, without any conditions, and the consideration has been paid to him for the thing pat ented, the rule is well established that the patentee must be understood to have parted to that extent with all his exclusive right, and that he ceases to have any interest whatever in the patented machine so sold and delivered or authorized to be constructed and oper also unlimited in place. The purchaser may use the article anywhere, whether within or without the territory covered by ated. Where such circumstances appear, the owner of the machine, whether he built it or purchased it, if he has also acquired the right to use and operate it during the lifetime of the patent, may continue to use it until it is worn out, in spite of any and every extension subsequently obtained by the patentee or his assigns." 3 0. G. 241 (242); 6 Fisher, 331 (332). In Blanchard v. Whitney (1855), 3 Blatch. 307, Nelson, J.: (309) "As I have already said, it would be a very forced and unreasonable construction of the transaction, to limit the duration of the use to the then existing term of the patent, in the absence of any express provision to that effect, inasmuch as the limitation of that term in no way operated necessarily as a restriction upon the title of the patentee and manufacturer. He could convey the right to an unlimited use. When the plaintiff built the machine now sought to be enjoined by him, he had a right to use it as long as it should last, for all coming time. This right he had irrespective of the patent. As the inventor and builder of the machine, he had this right to such use, without a patent. The patent secured to him the exclusive right to all machines made like it, and deprived all others of the right to make or use the same, without his consent, for a certain period of time. But the right to use the machine in question for all coming time was in the plaintiff, without the patent. The right which the plaintiff had to the machine in question, he conveyed to the defendant. He conveyed his whole right to ithis whole right to the use of it. And, as his whole right was a right to use it for all coming time, he conveyed to the defendant his right to that extent. By his voluntary act, his whole right to use the machine in question became vested in the defendant; and the act of Congress of 1847, which authorizes the renewal and continuance of the plaintiff's patent to his use, does not purport to take away, neither could it take away, any right vested in the defendant, or any one else, by the voluntary act of the plaintiff." Further, that such license to use continues during an extension, unless expressly restricted to the current term of the patent, see Union Paper Bag Mach. Co. v. Nixon (1876), 2 Bann. & A. 244; 1 Flippin, 491; 9 O. G. 691; Wooster v. Sidenberg (1875), 10 O. G. 244; 2 Bann. & A. 91; 13 Blatch. 88; Hawley v. Mitchell (1871), 4 Fisher, 388; Holmes, 42; 1 O. G. 306; Adams v. Burke (1871), 4 Fisher, 392; Holmes, 40; 1 O. G. 282; Farrington v. Commissioners of Detroit (1870), 4 Fisher, 216; Farrington v. Gregory (1870), 4 Fisher, 221; Hodge v. Hudson River R. R. Co. (1868), 3 Fisher, 410; 6 Blatch. 85; Wood v. Michigan Southern & Northern Indiana R. R. Co. (1868), 3 Fisher, 464; 2 Bissell, 62; Bloomer v. Millinger (1863), 1 Wall. 340; Goodyear v. Beverly Rubber Co. (1859), 1 Clifford, 348; Day v. Union India Rubber Co. (1856), 3 Blatch. 488; Bloomer v. McQuewan (1852), 14 How. 539; Wilson v. Rousseau (1846), 4 How. 646; 2 Robb, 372; Simpson v. Wilson (1846), 4 How. 709; 2 Robb, 469. That the right of the purchaser of a patented device to use it during an extension is the same though the extension be granted by a special act of Congress, see Bloomer v. McQuewan (1852), 14 How. 539. That the purchaser of a patented device may use it under a re-issue, see Simpson v. Wilson (1846), 4 How. 709; 2 Robb, his vendor's grant or license, except perhaps within a district owned by a grantee whose title is anterior to that of his vendor. It is likewise unlimited in method. Of whatever use the article is capable he may avail himself, even although the right to apply the patented articles to a special purpose has previously been granted to a different licensee. It is, finally, unlimited in quantity. The article vests in him as its absolute owner, and all the benefit which he can derive from its employment he is entitled to enjoy. 469; Wilson v. Turner (1846), 4 How. signed prior to the assignment to his 712; 2 Robb, 467. 2 As to the right of a purchaser from a grantee to use anywhere, see remarks on McKay v. Wooster, in § 824, note 5, ante. That the purchaser from a territorial grantee or licensee, may use the article anywhere, except perhaps when the vendor's right is restricted to sales for use within such territory, see Hobbie v. Smith (1886), 27 Fed. Rep. 656; Adams v. Burke (1873), 17 Wall. 453; 50. G. 118; McKay v. Wooster (1873), 2 Sawyer, 373; 6 Fisher, 375; 3 O. G. 441; May v. Chaffee (1871), 2 Dillon, 385; 5 Fisher, 160; Hawley v. Mitchell (1871), 1 O. G. 306; 4 Fisher, 388; Holmes, 42; Adams v. Burke (1871), 4 Fisher, 392; Holmes, 40; 1 O. G. 282; Jenkins v. Greenwald (1857), 1 Bond, 126; 2 Fisher, 37. That the purchaser of a patented article from a grantee may use it anywhere, and the sale is lawful though the grantee knows that it will be used outside his territory, see Hobbie v. Smith (1886), 27 Fed. Rep. 656. That the purchaser of the patented device from an assignee of a territorial right to use and sell in that territory may use the device in any place in spite of other territorial assignments, see Adams v. Burke (1873), 17 Wall. 453; 5 O. G. 118. That where a patented article is sold by the grantee of an entire territorial interest, the purchaser may use it anywhere, except perhaps in territory as vendor, see McKay v. Wooster (1873), 3 O. G. 441; 6 Fisher, 375; 2 Sawyer, 373. That no limitation in the assignment of his interest to a territorial assignee, will deprive a purchaser of the patented device from him of the right to use it always, see Hawley v. Mitchell (1871), 1 O. G. 306; 4 Fisher, 388; Holmes, 42. That a limitation in a license as to the place and time of use of the patented devices made and sold by such licensee will bind his vendees, see Hawley v. Mitchell (1871), 1 O. G. 306; 4 Fisher, 388; Holmes, 42. That a sale of the device by the patentee in a foreign country, without restrictions, confers a right to use it anywhere, see Holliday v. Matheson (1885), 24 Fed. Rep. 185; 31 O. G. 1444; 23 Blatch. 239; Holliday v. Matheson (1884), 30 O. G. 452. 8 That the lawful vendee of a patented article may use it in any mode of which it is capable, see McKay v. Wooster (1873), 3 O. G. 441; 6 Fisher, 375; 2 Sawyer, 373; Adams v. Burke (1871), 4 Fisher, 392; Holmes, 40; 1 O. G. 282. That the purchaser of a patented device from an assignee of the right to make it may use it for any purpose, though the right to use it for a special purpose has been granted to a different assignee, see Metropolitan Washing Machine Co. v. Earle (1861), 2 Fisher, 203; 3 Wall. Jr. 320. |