Indiana State sentinel. [volume] (Indianapolis) 1841-1853, 1849-08-02

IN III U. s. CIRCUIT COURT-FoR INDIANA.
MAY TERN, 1919.
Thomas r. Case v. Rsdheld & Puett.
For Infringement Of Parker Wheel.

FOr Infringement Of Parker WheeL
II is not essential 10 The validity OF an assignment OF a
It should be recorded in The patent Office. The record is no
tiee to purchasers.
An ordinary assignment will not convey TO the assignee
an interest in the renewed patent.
The renewal is for The benefit Of the inventor, and an in
terest in it, before the renewal, must be specially assigned.
The individual who holds The original right patented, and
also an improvement on that tight, must assert his entire
in an action for an Infringement
To show a violation Of the patent. the declaration need
aver that the defendant has constructed, used aud sold
TO others. the thing patented.
Messrs. Smith and Waite for plaintiff.
MesHs. Judah aud McGaughsy for defendants.
OPINION OF THE cOURr.-rhe plaintiff claims TO be the
Parker, on the i0uh October, lS29. for the term Of fourteen
years, for the invention Of " PERCUSSION and reaction water
wheel for mills" SC And he alleges that on the 9th June.
1870, the said pstentees having invented n new and useful
improvement on The above right. a patent for the improve
meut was issued TO zeOulon Parker and Robert MeKelvey,
administrations Of Austin Parker, deceased, in trust for his
heirs al law, for fourteen years.
On tie 3lst July, 1871. McKelvey, for the consideration
OF twenty-five hundred dollars assigned to Zebulon Parker.
+" all the right, title and interest which said heirs had in said
invention aud improvement, as secured to them by said let
ters patent for the whole # The United States. with certain
exceptions, and for the use and behOof of his legal Tepse-
senlatiyes for which lelteIs patent were or may be granted
for said Improvements, as fully aud entirely as the same
would have been held and enjoyed by said heirs had that
meats were made down 10 the right asserted BY the plain
tiff.
And the plaintiff AYERS that the defendants have iufringed
his right, as stated under the patent. The defendant demurs
to the declaration aud assigns, as causes Of demurrer, the
following:
l.. " That the declaration does not show that any assign
ment was ever made BY the administrator Of Austin Parker,
deceased, Of the extension Of the original patent granted 10
Zebulon and Austin Parker, noc does il show any right in
the present plaintiff in but one half Of the present patent"
2. "The declaration is double and mullifsriOus in this,
that the plaintiff sues for the invasion in each count Of two
separate and distinct rights growing out OF separate and dis
tinct patents, that is to say, for The invasion Of the original
patent granted October 10. 1879. and also for an invasion Of
the patent for an Improvement granted 9Th June. 1902
3. " The declation d es not set forth in what OF by what
means the defendants violated the patents set forth"
There is also a demurrer to the last count in the declara-
tion which sets out the assignments, but does not ave. that
they are recorded in the patent Office.
The assignments are set out in the declaration originally
filed and they are stated 10 have been recorded in the office ;
but this cannot obviate The objection made by the demurrer
TO the last count.
By the Law Of Cor gress The assignments are required TO be
recorded, but The effect 0f an omission TO have them record
ed is not declared IL has been held by Nj. Justice Story
that a failure to record an assignment was not essential to
its validity as betweeH the parties and against strangers, and
was only necessary by way of notice to purchasers. The
same construction has been given to the statute by several
circuit courts of the United STATES, and we think il is the
true one. The demurrer 10 the last count in the declaration
is, therefore, overuled.
In regard to the objection first made on the special demur-
rer, that there has been no assignment Of the interest 10 the
heirs Of Austin Parker, in the extended patent, it must be
admitted that there has been no assignment of IL since the
patent was extended; and il there was no assignment Of
this interest before the extension, the truth OF the fact IS
established whatever may be its legal effect.
In The case Of Wilson v. Rousseau, 4 Howard GAG, il was
held that The extension Of The patent was given for The ben
eft of he original inventor or his representatives, TO COM
pensate him for his expenditures, labor and ingenuity IN the
invention and in perfecIing it and that 40 ordinary assign
ment If The right in the patentee would not convey any
right in the extended patent. But, that such an interest.
when intended to be assigned, must be expressed.
The original patent II the PaTkeTs was extended for seven
yeas on the 4Ih Of October, lS43. and since the extension
there has been no assignment by the heirs Of Austin Parker.
But the plaintiff relies upon the assignment OF Mckalyey to
Zebulon Parker, on the 3lst July, lS4l, as transferring The
8 OF the above heirs II the renewed patent. And n
would seem from the language of that assignment this con-
struction of il is sustaiaable.
II appears at the tire Of this transfer the original patent
had but litlc more than two years TO run. and although enc
half OF the Improvement on the original patent was included
in the assignment. yet the improvement without the original
invention could not be used and would be OF little value
The sum Of twenty. five hundred dollars vas the consideTa-
ton named 10 The assignment. From this it would be rea-
sonabie 10 infer that the entire interest IN the heirs, present
and future, in the invention vas intended TO be conveyed
So large a sum would not have been paid for one half Of the
improvement on the original light, and a moieiy OF The or
ginaI patent which would expire in two yeas.
The operative words of the assignment show the inieatiOn
of the parties. They are, Z" all the right, title and interest
which said heirs has in said invention and improvement. as
secured to them by-said Letters patent for The whole Of the
United States, with certain exceptions, and Tor the use and
behoOf of his (Zebulon PaIkei's) representatives., for which
letters patent were or may be granted for said Improvements,
as fully and entirely as the same would have been held and
enjoyed by said heirs, had that assignment not been made"
HeIe is not only a present but a future interest assigned;
an interest received by the present letters patent, or by pa
tents which may hereafter be granted for said Improvements:
This was intended TO transfer the right under a renewal oil
the patent. No other construction can be given TO the wolds
used. They cannot be made to apply to any correction OF a
supposed error in the specifications or claims Of the patent.
Under the law when this assignment was made, the patent
was not void for claiming more than was invented, and IIs
not pretended that there is any want Of precision in the
specifications.
Under the ac, Of 4h July, 1886, sec. Is, for the extension
Of a patent, it may have been supposed that a new grant
would be issued. But a much shorter mode has been adopt
ed, by an endorsement upon the original patent.
The second ground of objection in the special demurrer,
that the declaration is double and multifariOus, !" is not sus-
tainable.
The wrong complained Of is for an Infringement Of the
improved patent, not fer a violation Of the original patent,
or Of the improvement upon the original grant, but OF the
entire right united in the plaintiff by The different patents
and assignments. The right set up 5 an entirety, and being
united in the same individual is not susceptible oil a division.
Had he divided his cause of action, claiming damages IN one
case for the Infringement Of The original patent, and in au-
other for an infringement of the improvement, the actions
could not have been sustained. AZ well might different &C
tons be brought for trespass upon a close, on the ground that
The land was held snder distinct titles. The injury done
was TO the entire close, and that consIilsles the ground vi
the action.
Ii NAV be admitted that two defendants cannot be united
in the same action. where each haa iufringed distinct pa
tents; for in that case there could be no joint defence:
There would be no right common to the defendants, and
consequently both would be SUBJECTED 10 additionai cos aho
delays by the j1inder OF the two. But where the original
patent and the improvement on it are united m the Same
person. they constitute a whole, an enlile tight, and must be
asserted as such in an action Ior an Infringement.
The other ground Of demurrer, as 10 the violation oil the
plaintiffs right is answered by the declaration. The wrong
done is alleged in the usual loTm. that the defendant " made,
constructed, used and vended to sundiy persons" &c. the
said invention. The special demurrer is Overruled.
FIRE AT AuRoRA-We regret to have to stale that
the extensive Disiillery and FIGURING Mill of the
! Messrs. Gaff, at Aurora. was entirely destroyed BY
fire on Monday afternoon last. The accident occurred
by one of the hands in the Distillery approaching the
still with a light IN his hand, which lgnIted the gas,
exploding the still and setting the whole establish
ment on FIRE. The person who bore the light was Sc
yerely injured. The entire establishment with q large
amount of corn was destroyed. Loss estimated ut
$50, 900, of which $4,000 was covered by insu-