Opinion · Supreme Court of the United States

Kennedy v. Hazelton

Kennedy v. Hazelton, 128 U.S. 667 (1888)

Type
Opinion
Court
Supreme Court of the United States
Jurisdiction
Federal
Date
1888-12-17
Topic
intellectual-property-and-technology

How later courts describe this case

  • holding that claimant was not entitled to declaratory judgment assigning him the patent on grounds that claimant was the true inventor because such an allegation, if true, would render the patent invalid
  • “A court of chancery cannot decree specific performance of an agreement to convey property which has no existence, or to which the defendant has no title.”

Citator

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Cited by
95 opinions

Headnotes

  1. Remedies — Specific Performance A court of chancery cannot decree specific performance of an agreement to convey property that has no existence or to which the defendant has no title; a bill by a vendee against a vendor for specific performance that does not show title in the defendant is bad on demurrer.
  2. Remedies — Specific Performance Where it appears that the defendant's want of title—even if caused by the defendant's own act, such as a conveyance to a bona fide purchaser—was known to the plaintiff when the suit was commenced, the bill will not be retained for an assessment of damages but must be dismissed, leaving the plaintiff to his remedy at law.
  3. Patent Law — Validity The patent law makes it essential to the validity of a patent that it be granted on the application, supported by oath, of the original and first inventor (or his executor or administrator), whether the patent issues to the inventor or to an assignee; a patent applied for by one who is not the inventor, unsupported by the inventor's oath, is unauthorized by law and void, and confers no rights as against the public whether taken out in the name of the applicant or of any assignee of his. Rev. Stat. §§ 4886, 4888, 4892, 4895, 4896, 4920
  4. Patent Law — Validity A patent issued by the Commissioner to an assignee is only prima facie evidence that the named person was the inventor, and that presumption of validity is rebutted and overthrown by a distinct allegation, admitted by demurrer, that the defendant rather than the named applicant was the true inventor.
  5. Remedies — Patent Assignment — Void Patent Where, on the plaintiff's own showing, a patent conferred no title or right on the defendant, a court of equity will not order the defendant to assign it to the plaintiff, both because that would decree a conveyance of property in which the defendant has and can confer no title, and because its only possible value or use to the plaintiff would be to enable him to impose upon the public by asserting rights under a void patent.
  6. Remedies — Accounting for Profits — Void Patent A bill cannot be maintained for an account of profits received by the defendant from the use of a patent where the patent is void, because a decree for profits can only proceed on the ground that the plaintiff is at least the equitable owner of the patent, and there can be neither legal nor equitable ownership of a void patent.
  7. Remedies — Bill to Remove Cloud on Title — Void Patent A bill cannot be maintained as one to remove a cloud upon the plaintiff's title in a patent where the patent is void, since no legal or equitable ownership of a void patent can exist.
Mr. Justice Gray,

after stating the case as above reported, delivered the opinion of the court.

The case, as stated in the bill and admitted by the demurrer, is shortly this: The defendant agreed in writing to assign to the plaintiff any - patents that he might obtain for improvements in steam boilers. He did invent such an improvement, and, with intent to evade his agreement and to defraud the plaintiff, procured a patent for this invention to be obtained upon the application under oath of a third person as the inventor, and to be issued to him as assignee of that person, and has made -profits by manufacturing and selling boilers embodying the improvement so patented. The plaintiff seeks by bill in equity to compel the defendant to assign the patent to him, and to account for the profits received under it.

A court of chancery cannot decree specific performance of an agreement to convey property which has no existence, or to which the defendant has no title, ' A bill by vendee against vendor for specific performance, which does not show any title in the defendant, is bad on demurrer. And if it appears, by the bill or otherwise, that the want of title (even if caused by the defendant’s own act, as by his conveyance to a bona fide' purchaser) was known to the plaintiff at the time of beginning the suit, the bill will not be retained for assessment of damages, but must be dismissed, and the plaintiff left to his remedy at law. Columbine v. Chichester, 2 Phillips, 27; S. C. 1 Coop. Temp. Cottenham, 295 ; Ferguson v. Wilson, L. R. 2 Ch. 77; Kempshall v. Stone, 5 Johns. Ch. 193; Morss *672 v. Elmendorf, 11 Paige, 277; Milkman v. Ordway, 106 Mass. 232, 256.

■ The patent law makes it essential - to the validity of a patent, that it shall be granted on the application, supported by the oath, of the original and first inventor, (or of his executor or administrator,) whether the patent is issued to him or to his assignee. A patent which is not supported by the oath of the inventor, but applied for by one who is not the inventor, is unauthorized by law, and void, and, whether taken out in the name of the applicant or of any assignee of his, confers no rights as against the public. Rev. Stat. §§ 4886, 4888, 4892, 4895, 4896, 4920.

The patent issued by the Commissioner to the defendant as assignee of Goulding is only prima facie evidence that Goulding was the inventor of the improvement patented; and the presumption of its validity in this respect is rebutted and overthrown by the distinct allegation in the bill, admitted by the demurrer, that the' defendant, and not Goulding, was the inventor. This fact is not brought into the case by any answer or plea of the defendant, but it is asserted by the plaintiff himself as a ground for maintaining his bill.

As the patent, upon the plaintiff’s own showing, conferred no title or right upon the defendant, a court of equity will not order him to assign it to the plaintiff — not only because that would be to decree a conveyance of property in which the defendant has, and can confer, no title; but also because its only possible value or use to the plaintiff would be to enable him to impose ' upon the public by asserting rights under a void patent. Post v. Marsh, 16 Ch. D. 395; Oldham, v. James, 14 Irish Ch. 81.

The bill cannot be maintained for an account of profits received by the defendant from the use of this patent, because a decree for profits can only proceed upon the ground that the plaintiff is at least the equitable owner of the patent,, and there can be neither legal nor equitable ownership of a void patent. The same reason is a sufficient answer to the suggestion of the plaintiff that the bill may be maintained as a bill to remove a cloud upon his title in this patent.

*673 In Ambler v. Whipple, 20 Wall. 546, cited by tbe plaintiff, the suit was based upon articles of partnership between Ambler and Whipple, by which it was agreed that all patents obtained by either partner should be owned by both in equal shares. The bill alleged that the two jointly had obtained a patent for a joint invention, and that another patent, after-wards obtained by Whipple upon the application of a third person, embodied the same invention with only a colorable variation. Neither of the patents was in the record, and the questions now presented were not suggested by counsel or. considered by the court, but the decree for the plaintiff pro-' ceeded upon independent grounds.

The result is, that the present bill cannot be maintained, and that the plaintiff must be left'to any remedy that he may have to recover damages in an action at law.

Decree affirmed.

The Chief Justice and Mr. Justice Bradley dissented.