Leach v. Dresser , 69 Me. 129 ( 1879 )

Virgin, J.

Having invented a Navigator’s Bearing Indicator, and applied for a patent therefor, the plaintiff, by his deed of April 13,1869, duly recorded in the patent office, assigned his right to himself, Sabin Hutchins and Sewell Leach, to whom, on July 6, 1869, letters patent were duly issued. Moreover, the plaintiff subsequently invented an improvement in the original invention, and on April 26, 1870, letters patent of that date, No. 102,281, were issued to him alone for “Improvement in Navigator’s Indicator.”

Soon afterwards, the plaintiff and Hutchins began to negotiate for a sale of one-half interest in the patent to the defendants. One bargain was “ thrown up ” because of some misunderstanding as to some of its terms. Subsequently the terms of a sale were agreed upon by the parties, which the plaintiff claims he has performed so far as he is concerned, and now seeks to recover payment of the defendants in accordance with their alleged stipulations. The defendants deny both the terms as claimed by the plaintiff and also performance on his part.

The declaration contains four counts on the special contract. The first alleging, in substance, that, in consideration that the plaintiff would assign to the defendants one-half interest in the “ patent right of a certain invention called a Patent Bearing Indicator, patented under the laws of the IJ. S., the defendants then and there promised to pay the plaintiff §3,500; ” and that he did thereupon assign one-half of said patent to the defendants, who received and accepted the same in full of his promise, but that they refused to pay as they agreed. The three other counts set out the same special promise with performance on the part of the plaintiff) but with a promise of a different amount and mode of payment, together with a refusal of performance, on the part of the defendants.

To sustain these counts, the plaintiff and Hutchins testified, in substance, that one-half of the whole patent, including the original and improvement, was to be assigned to the six defendants; and, in consideration of such assignment, the defendants were to pay 01500 cash down and $2000 in notes, in manner following : The Harrimans, instead of paying their share ($500) of the cash, were to be allowed that sum for their personal services in introducing the machine to the public; $1000 to be paid in cash by the remaining four defendants on delivery of the assignment; and the six defendants to give their note for $2000, to be deposited with the treasurer of the company to the credit of the owners of the other half; that $500 were paid before the delivery of the deed ; that a deed, executed by the plaintiff on August 29, 1870, was delivered to the defendant Dresser, who acted as agent of all his co-defendants ; that the defendants have refused to pay the remainder of the cash or deliver the $2000 note; and that the Harrimans have never rendered their personal services stipulated and for which they were to bo allowed $500.

But on examination of the deed of assignment, it does not assign one-half of the whole patent, nor does it purport to do so. On the contrary, the assignment is expressly limited to one-half of Dresser’s right, title and interest in the “Improvement in Navigator’s Bearing Indicator,” secured by “letters patent bearing date April 26, 1870, and numbered 102,281.”

This was all of the patent improvement which the plaintiff was bound to assign. He was the sole inventor, had never before assigned (as he covenants in this deed) to any other persons, and could alone assign it by his sole deed. But this deed did not assign one-half of the whole patent, including the original and improvement. For a patent for an improvement of a machine already patented gives to the latter patentee no right to use the invention of the former patentee — the original invention— without his license. Foss v. Herbert, 2 Fish. Pat. Cas. 31. Goodyear Dent. Ful. Co. v. Evans, 3 Fish. Pat. Cas. 390. Curt. Pat. § 24, and notes. The plaintiff 'could not assign one-half of the original patent, without which the improvement would be of no avail to the defendants, for he owned but one third, originally, being one of three joint patentees, and they had sold parts of that to numerous persons in Penobscot prior to this attempted sale to the defendants. And there is no pretense that any deed of any portion of the original patent was ever executed by any of its owners to the defendants.

It is said, however, that the plaintiff’s deed of the improvement alone was accepted by the defendants in full performance of the plaintiff’s part of the contract of sale. And Foss v. Richardson, 15 Gray, 303, is cited as an authority to sustain the legal position. While we do not question the law laid down there, the testimony does not satisfy us that the plaintiff’s deed was accepted by the defendants. The fact is the contract was never fully completed. The minds of the parties never met upon the same proposition. They were never all together except once, and then the contract of sale was not completed. But taking it for granted that a sale was completed, the plaintiff has failed to show that he has complied with its terms. If there were any doubt iu relation to this point, wo are of the opinion that the plaintiff could not succeed in this action for want of other plaintiffs.

Judgment for defendants.

Appleton, C. J., Dickerson, Daneorth, Peters and Libbey, JJ., concurred.