§ 827. Implied License: License to Use does not Embrace the Right to Make, nor to Sell as Matter of Traffic. The right of the purchaser to repair the article does not embrace the right to make a new one nor to reconstruct the old. He may replace its worn-out parts or elements with others, even when these are of the essence of the invention.2 He may remove the effects of accident or wear and tear. He may add to it such improvements as he is able to procure. But when its original materials disappear, the article which he purchased ceases to exist, and with it the implied license to repair and use it. The power to sell the specific article § 827. 1 In Mitchell v. Hawley (1872), 16 Wall. 544, Clifford, J.: (548) "But the purchaser of the implement or machine for the purpose of using it in the ordinary pursuits of life stands on different grounds, as he does not acquire any right to construct another machine either for his own use or to be vended to another for any purpose." 3 0. G. 241 (242); 6 Fisher, 331 (333). That the purchaser of a patented device from the patentee may use it till it is worn out, but has no right to make another like it, see Union Metallic Cartridge Co. v. United States Cartridge Co. (1877), 2 Bann. & A. 593; 11 O. G. 1113. That a license implied from the purchase of a patented invention does not attach to it when rebuilt, see Gottfried v. Phillip Best Brewing Co. (1879), 17 O. G. 675; 5 Bann. & A. 4. That where the use of an invention destroys it, there is no implied license to reconstruct as there is to repair it, see American Cotton Tie Co. v. Simmons (1882), 106 U. S. 89; 22 O. G. 1976. 2 In Mitchell v. Hawley (1872), 16 Wall. 544, Clifford, J.: (548) "Sales of the kind may be made by the patentee with or without conditions, as in other cases; but where the sale is absolute, and without any conditions, the rule is well settled that the purchaser may continue to use the implement or machine purchased until it is worn out, or he may repair it or improve upon it as he pleases, in the same manner as if dealing with property of any other kind." 3 O. G. 241 (242); 6 Fisher, 331 (333). That the lawful sale of a patented machine confers the right to replace worn-out parts, though these are the essence of the invention, see Farrington v. Water Commissioners of Detroit (1870), 4 Fisher, 216. That the purchaser of a machine has an implied license to replace old parts as long as the identity of the machine remains, see Gottfried v. Conrad Seipp Brewing Co. (1881), 10 Bissell, 368; 8 Fed. Rep. 322. That the right to repair continues during an extension, see 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. 3 In Wilson v. Simpson (1850), 9 How. 109, Wayne, J. (122) "But the questions which were argued by counsel, when repairs destroy identity and encroach upon invention, or when the thing patented ceases to exist, so as to exclude the repair or thus purchased for use is also unrestricted, but does not extend to sales made in the ordinary course of trade.1 replacement of any one part of its combination, in connection with the rest of it, not requiring repair or to be replaced, are before the court upon the evidence in the record. We admit, for such is the rule in Wilson v. Rousseau, 4 Howard, that when the material of the combination ceases to exist, in whatever way that may occur, the right to renew it depends upon the right to make the invention. If the right to make does not exist, there is no right to rebuild the combination. But it does not follow, when one of the elements of the combination has become so much worn as to be inoperative, or has been broken, that the machine no longer exists for restoration to its orig. inal use by the owner who has bought its use. When the wearing or injury is partial then repair is restoration, and not reconstruction. Illustrations of this will occur to any one, from the frequent repairs of many machines for agricultural purposes; also from the repair and replacement of broken or worn-out parts of larger and more complex combinations for manufactures. In either case repairing partial injuries, whether they occur from accident or from wear and tear, is only refitting a machine for use; and it is no more than that, though it shall be a replacement of an essential part of a combination. It is the use of the whole of that which a purchaser buys when the patentee sells to him a machine; and when he repairs the damages which may be done to it, it is no more than the exercise of that right of care which every one may use to give duration to that which he owns, or has a right to use as a whole. This foundation of the right to repair and replace, and its application to the point we are consider ing, will be found in the answers which every one will give to two inquiries. The right to repair and replace in such a case is either in the patentee or in him who has bought the machine. Has the patentee a more equitable right to force the disuse of the machine entirely, on account of the inoperativeness of a part of it, than the purchaser has to repair who has, in the whole of it, a right of use? And what harm is done to the patentee in the use of his right of invention, when the repair and replacement of a partial injury are confined to the machine which the purchaser has bought?" 4 In Goodyear v. Beverly Rubber Co. (1859), 1 Clifford, 348, Clifford, J: (356) "Suppose it to be an implement or machine, he may devise it or sell it, and if it be composed of various parts, he may break it up and use the materials for any other lawful purpose. Second purchasers acquire the same rights as the seller had, and may do with the article or its materials whatever the first purchaser could have lawfully done if he had not parted with the title." That the purchaser of patented articles from a territorial grantee has no implied license to sell them outside such territory, as a matter of trade, though he may use them anywhere, see Hatch v. Adams (1884), 22 Fed. Rep. 434; 29 O. G. 776. That the licensee of a grantee can sell within the territory to those who use the article outside the territory, but cannot himself sell outside the territory nor furnish the articles to others to be sold in the trade outside the territory, see Hatch v. Hall (1887), 30 Fed. Rep. 613; 40 O. G. 1342. § 828. Implied License: License to Use not Restricted by Unknown Prior Agreements of Licensor. The purchaser of a patented article runs his own risk of his vendor's right to sell. But if his vendor has received this right, the vendee is not bound by any previous covenants between the vendor and third parties of which he has no notice at the time of sale, nor can he be affected by any subsequent conveyance of the vendor. Even an act of Congress cannot interfere with his enjoyment of the property which the sale has vested in him and which he now holds, not under the statutes of the United States, but under the common law that governs the usual contracts of vendors and vendees.3 § 828. 1 That the purchaser of a patented article runs the risk of the vendor's right to sell, see Mitchell v. Hawley (1872), 16 Wall. 544; 3 O. G. 241; 6 Fisher, 331. 2 That covenants between patentees and their licensees do not follow the patented device into the hands of bona fide purchasers without notice, see Metropolitan Washing Machine Co. v. Earle (1861), 2 Fisher, 203; 3 Wall. Jr. 320. That a licensee of a right to use the patented material for a certain article cannot hold as infringers those who purchase the article of licensed makers or sellers, and use the material for a different purpose, they having an implied license so to use it, see Metropolitan Washing Mach. Co. v. Earle (1861), 2 Fisher, 203; 3 Wall. Jr. 320. special laws the patentee and purchasers of different inventions were intended to be placed on the same ground; and that the relative rights of both parties under the extension, by special act of Congress, were intended to be the same as they were when the extension was granted under the general law of 1836. It would seem that in some cases the attention of the legislature was more particularly called to the subject, and the rights of the purchaser recognized and cautiously guarded. And when the provision is omitted, the just presumption is that Congress legislated on the principle decided by this court in Evans v. Eaton, and regarded the special law as ingrafted on the general one, and subject to all of its restrictions and provisions, except only as to the time the patent should endure. Time is the only thing upon which they legislate. And any other construction would make the legislation of Con That a recognition by the licensor of the rights of adverse patentees is binding on his prior licensees, see Jack-gress on these various special laws inson v. Allen (1876), 120 Mass. 64. 3 In Bloomer v. McQuewan (1852), 14 How. 539, Taney, C. J.: (552) "The fair inference from all of these special laws is this, that Congress has constantly recognized the rights of those who purchase for use a patented implement or machine; that in these various consistent with itself, and impute to it the intention of dealing out a different measure of justice to purchasers of dif ferent kinds of implements and machines; protecting some of them, and disregarding the equal and just claims of others. And if such could be the interpretation of this law, the power of § 829. Implied License: License to Use Implied in favor of Innocent Purchaser at Unlawful Sale, if Vendor afterwards Acquires an Interest in the Patented Invention. Another case of implied license, similar and collateral to the last, arises where a vendor, having no right to sell the patented article at the time of the purchase, afterwards acquires an interest in the patent by which a present right to sell is vested in him. Under these circumstances, the title of the former purchaser to the patented article becomes valid by estoppel, and from thenceforward his right to use it is complete against his vendor, and all subsequent vendees.1 The acquisition by the vendee of an interest in the patent has the same effect upon a previous unlawful sale, and renders it thereafter operative both on the article, and on the right to its enjoyment.2 §830. Implied License: License to Use Implied in favor of Purchaser at Unlawful Sale if Vendor afterwards Compensates the Owner of the Patent for the Infringing Sale. A third case, also collateral to the first, occurs where a vendor, who had no right to sell the article, is sued for the . Congress to pass it would be open to serious objections. For it can hardly be maintained that Congress could law fully deprive a citizen of the use of his property, after he had purchased the absolute and unlimited right from the inventor, and when that property was no longer held under the protection and control of the general government, but under the protection of the State, and on that account subject to State taxation. The 5th amendment to the Constitution of the United States declares that no person shall be deprived of life, liberty, or property, without due process of law. The right to construct and use these planing machines had been purchased and paid for without any limitation as to the time for which they were to be used. They were the property of the respondents. Their only value consists in their use. And a special act of Congress passed after wards, depriving the appellees of the right to use them, certainly could not be regarded as due process of law." § 829. 1 That where a person unlawfully sells a patented device, and afterwards acquires an interest in the patent, he is estopped from denying the right of his vendee to use the device till it is used up, see Gottfried v. Miller (1882), 104 U. S. 521; 21 O. G. 711. That whether the other owners of the patent are also estopped, quere, see Gottfried v. Miller (1882), 104 U. S. 521; 21 O. G. 711. 2 That where the purchaser of a patented article, from one who had no right to sell it, afterward obtains an assignment of the territorial right, his purchase of the invention becomes lawful, and he may use the article even during an extension, see Eunson v. Dodge (1873), 18 Wall. 414; 5 O. G. 95. infringement by the owner of the patented invention, and satisfies the judgment which has been obtained against him. Here, if the owner of the patent receives his compensation by license-fees or royalties, or makes and sells the articles for public use, the damages which he recovers are the substitute for the license-fees which are his due, or for the profits he would have obtained if he himself had sold the article instead of the vendor. Thus by the satisfaction of his judgment he has already once received his lawful recompense for the release of this particular article from the monopoly, and estopped himself from claiming that the title of the purchaser is void. The purchaser, therefore, may retain the article as his rightful property, and use it and repair it as freely as if he had procured it from the patentee. But where the owner of § 830. In Allis v. Stowell (1883), 16 Fed. Rep. 783, Dyer, J.: (787) "The recovery of profits and damages from the manufacturers of an infringing machine debars the patentee from recovering from a user for the use of the same machine,' where the user purchased the machine from the infringing manufacturers. Booth v. Seevers, 19 O. G. 1140, and cases there cited. These adjudications indicate the law to be that where a patentee recovers from an infringing manufacturer full damages and profits on account of the infringement, the purchaser from such manufacturer, who is a user of the machine, will be protected in such use against a suit for infringement, as he would be if he were a licensee from the patentee. But this could only be held on a clear showing that the purchaser was using the same patented machine or instrument as that involved in the suit between the patentee and the infringing manufacturer, and that the user was a vendee of such manufacturer; and under the authorities it would seem that to effect such a result it must further appear that the patentee's claim to profits and damages against the manufacturer has been actually paid and satisfied." In Steam Stone Cutter Co. v. Windsor Mfg. Co. (1879), 17 Blatch. 24, Wheeler, J.: (31) "If the avails of the sales are claimed and taken, the right to the thing sold must be parted with ; solutio pretii emptionis loco habetur. (2 Kent's Comm. 387.) It will be like taking judgment and satisfaction for the conversion of property, which always operates so that the defendant hath now the same property therein as the original plaintiff had, and this against all the world.' (Adams v. Broughton, Andr., 19, Strange, 1078.) And this relates back to the time of the conversion. (Addison on Torts, Wood's ed., 544; 6 Hen. VII., fols. 8, 9, pl. 4; Shep. Touch. 227; Barnett v. Brandão, 6 Man. & Gr. 640, note.) The sales must be adopted by the orator upon the very terms upon which the defendant made them, and as much right to the inventions must follow as if the sales had been made by the orator instead of by the defendant. It may be that this right will not follow until satisfaction is made; but whether it will or not is not now material. The question now is, how much the orator is entitled to recover by way of satisfaction; and this |