Citation Numbers： 22 F. 434
Judges： Mokennan
Filed Date： 10/20/1884
Status： Precedential
Modified Date： 9/9/2022
This case involves a single question, to-wit: Has a purchaser of patented articles from a grantee of an exclusive right to manufacture and sell under the patent in a specified part of the United States, the right to sell the articles in the course of trade, outside the designated limits covered by the grant to his vendor ? In the absence of authority to the contrary, we would feel constrained to answer this question in the negative. While the patent act secures to an inventor the exclusive right to manufacture, use, and sell his invention, it authorizes him to divide up his monopoly into territorial parcels, and so'to grant to others an exclusive right under the patent to the whole or a specified part of the United States. Undoubtedly, the grantee would take and hold the right conveyed subject to the limitations of the grant, and hence he could not lawfully exercise it outside of the territorial limits to which he was restricted. It would be illogical, then, to assume that he could confer upon a vendee a privilege with which he was not invested, and which he could not exercise himself. It has been held, however, that an unrestricted sale of a patented article carries with it the right to its unlimited use. But the reason upon which this rule rests involves a plain distinction between the right to use and the right to manufacture and sell an invention, and is inapplicable to their definition. In Adams v. Burke, 17 Wall. 455, Mr. Justice Miller thus explains the import and scope of the decisions on the subject:
“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*437 to the use oí 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 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.” “The right to manufacture, the right to sell, and the right to uso are each substantive rights, and may bo granted or conferred separately by the patentee.” “Rut, in the essential nature of things, when the patentee, or the person having his rights, sells a machine or instrument whose sole value is in its use, he receives the consideration for its use, and ho parts with the right to restrict that use. The arricio, in the language of the court, passes without the limit of the monopoly; that is to say, the patentee or his assignee having, in the act of sale, received all the royalty or consideration which ho claims for the use of his invention in that particular machine or instrument, it is open to the use of the purchaser without'further restriction on account of the monopoly of the pat-entee.”
The only question in this case, as shown by the pleadings, involved the right oí the purchaser of coi’fin-lids, bought within a radius of 10 miles from Boston, the right to make, sell, and use which was restricted to that circle, to use them outside of it. The court sustained the right, saying:
“That so far as the use of it was concerned the patentee had received his consideration, and it was no, longer within the monopoly of the patent. It would be to ingraft a limitation upon the right of use not contemplated by the statute, nor within the reason of the contract, to say that it could only be used within the ten-miles circle. Whatever, therefore, may be the rule where patentees subdivide their patents, as to the exclusive right to maize or sell within a limited territory, we hold that, in the class of machines or implements which we have described, when they are once lawfully made and sold, tlu-re is no restriction upon their use to bo implied for the benefit of the pat-entee, or his assignees or licensees. ”
Even with this careful limitation of the judgment of the court’ Justices Buadley, S waynp,, and Bteong dissented, insisting that the locality of the use, as well as of the manufacture and sale, of the patented article was restricted by the grant, and that it ought, accordingly, to be enforced. It may be said, then, that while this case, with others which precede it, determines for peculiar reasons that the lawful sale of a patented article carries with it the right to the unrestricted use of such article as to time or locality, it in the fair import of them that no other “substantive right” conferred by the patent is thereby affected.
Our attention has been called to two cases decided by the circuit court which demand a brief notice. The first .of these was Adams v. Burke, A Fisher, 392. It was decided by Judge Sheplky, and bis statement of the law is certainly broad enough to cover the right to sell as well as the right to use a patented article outside of a restricted locality. But only the latter right was involved in the case. What’was said then by the learned judge touching the right to sell was clearly obiter, and when the case reached the supreme court,
But, with this scrutiny of these cases', we are unembarrassed by the rule of comity which would lead us to conform our own judgment to that pronounced by the circuit court elsewhere for the sake of uniformity of decision; and, in view of the state of the law as it has been expounded by the supreme court, we feel authorized to express our own j udgment that a sale of patented articles in the ordinary course of trade, outside the territorial limits to which the right to sell is restricted by the patentee’s grant, is unwarranted. There must, therefore, be a decree in favor of the complainant, with costs.