Hamilton v. Kingsbury. or had any notice thereof, until they learned of the mention thereof in the bill. The plaintiff put in a replication to the plea, and proofs have been taken and the case has been heard thereon. The bill above mentioned is an amended bill. The suit was before the court on the original bill and a plea thereto, at the June Term, 1878. Hamilton v. Kingsbury, 15 Blatchf. C. C. R., 64. The pleadings then brought before the court all the instruments now before it, except the two unrecorded instruments of August 27th, 1866. The question then presented for consideration was solely as to the construction of the recorded conveyance of August 27th, 1866, from Milton A. Hamilton to Lombard & Thompson. The court held, that, under and by that conveyance, Lombard & Thompson acquired the right to make, as well as the right to use and to sell to be used, "the said saw hangings, as they are or may be applied to muley or single upright mill saws, as secured by the said letters patent, for, to and in the State of New York," such right to use and to sell to be used being exclusive, but the grantor reserving to himself a right to make in common with the grantees. The plea was allowed. On the present pleadings and the proofs thereunder it is contended for the plaintiff, that, under the three instruments of August 27th, 1866, taken together, Lombard & Thompson acquired no right to make the invention, except in a certain contingency, which has never happened; that the three instruments are contemporaneous and are all portions of the same transaction, and must all be read together to determine the intent of the parties to the transaction; that those three instruments are consistent with no intention other than the one set up in the bill; that, if the recorded conveyance of August 27th, 1866, gives to Lombard & Thompson the right. to manufacture, the other two instruments have no meaning; and that the instruments are (1) a license, which, in terms, gives the licensees no power to manufacture; (2) an agreement, by which the licensor agrees to furnish the hangings to the licensees at fixed prices, and the licensees agree that they will not manufacture so long as the licensor keeps his Hamilton v. Kingsbury. agreement; (3) a permission from the licensor to the licensees to manufacture, in case the licensor fails to perform his agreement. It seems plain that the three instruments, taken together, must have the interpretation claimed for them by the plaintiff. But, the defendants contend that they are bona fide purchasers, without notice of any instrument but the recorded conveyance of August 27th, 1866, and that they are protected from any unrecorded agreement between Milton A. Hamilton and Lombard & Thompson, in the absence of any actual notice thereof. The recording Act in force when the defendants took their conveyance from Strong & Woodbury, on the 10th of December, 1869, was section 11 of the Act of July 4th, 1836, 5 U. S. Stat. at Large, 121, which provided, that every patent shall be assignable in law, either as to the whole interest, or any undivided part thereof, by any instrument in writing; which assignment, and also every grant and conveyance of the exclusive right under any patent, to make and use, and to grant to others to make and use, the thing patented within and throughout any specified part or portion of the United States, shall be recorded in the Patent Office within three months from the execution thereof." It is well settled, that mere licenses, or contracts conferring the limited and not the exclusive right to exercise some of the privileges secured by the patent, are not the subjects of regulation by this statute, and that it relates solely to grants or conveyances of the exclusive right, or legal estate, vested in the patentee, which leave no interest in the patentee for the particular territory and the particular right to which they relate. Curtis on Patents, 3d ed., § 179. Within this rule, the recorded conveyance of August 27th, 1866, from Milton A. Hamilton to Lombard & Thompson, is not an assignment of the whole interest in the patent, or of any undivided part thereof, nor is it a grant or conveyance of the exclusive right, under the patent, to make and use, and to grant to others to make and use, the thing patented, within and throughout any specified part or portion of the United States. It is only a license. It reserves to the grantor" the right to manufacture the said invention." Hamilton v. Kingsbury. Whatever right to manufacture the grantees acquired by the face of it, such right was not exclusive in them. Therefore, such instrument was not one required to be recorded. Nor were the other two instruments of August 27th, 1866, instruments which it was necessary to record. The recording of the instrument of August 27th, 1866, which was recorded, was not notice to the defendants that they could safely rely on the record, as showing the whole transaction between the parties to the instrument in respect to its subject-matter. The three instruments were all of them valid, without recording, as against the defendants, although bona fide purchasers without actual notice. Although the recorded instrument of August 27th, 1866, may, on its face, convey the right to make to the grantees, seeing it on the record is of no more avail to the defendants than if they had seen it out of the record. The existence of the three instruments, taken together, as limiting the right of Lombard & Thompson, affects the defendants with the consequences of such limitation, for they can have no greater right than Lombard & Thompson had. The plea is overruled, with costs to the plaintiff to be taxed, with leave to the defendants to answer, on payment of such costs within 30 days after service of a copy of the order to be entered on this decision. A. C. Coxe, for the complainant. W. F. Cogswell and George B. Selden, for the defendants. Perry v. Littlefield. JOHN S. PERRY, TRUSTEE, &C. vs. DENNIS G. LITTLEFIELD ET AL. IN EQUITY.* The decision of the Supreme Court, in Littlefield v. Perry, 21 Wallace, 205, construed. The invention covered by the claim of the letters patent reissued to Dennis G. Littlefield, May 31st, 1870, for an "improvement in the mode of hinging covers to stoves, tea kettles and other open-topped vessels," un the surrender of the original letters patent granted to said Littlefield, March 13th, 1866, namely, "A detachable cover and its seat, respectively provided with a pin and an opening, so constructed as to engage or lock with each other, for the purpose of hinging and securing a cover upon an open-topped vessel, substantially as described," is an invention the exclusive right to which for the States of New York and Connecticut, as applicable to stoves covered by the patents embraced in the assignment of April 5th, 1853, and in the supplemental agreement of the same date, referred to in Littlefield v. Perry, belongs to the plaintiff, as against Littlefield and all persons claiming under him. A bill in equity being maintainable in some respects, a demurrer to the whole bill was overruled. The parties to the suit being all of them citizens of New York, this court has no power to decree that the defendant execute to the plaintiff a transfer of letters patent. (Before BLATCHFORD, J., Northern District of New York, November, 1879.) BLATCHFORD, J. The assignment of April 5th, 1853, recites the granting to Littlefield of a patent on the 15th of April, 1851, "for a coal burner so constructed as to produce combustion of the inflammable gases of anthracite coal," and the fact that he had applied for a patent "securing to him a certain improvement in the invention so as aforesaid patented by him," and then assigns to Treadwell and Perry all the right, title and interest which Perry v. Littlefield. Littlefield "now has, or can or may hereafter have, in or to the aforesaid inventions, improvement and patent, or the patent or patents that may be granted for said inventions, or any improvements therein, and in any extension or extensions thereof, within and throughout the district and territory embraced within the States of New York and Connecticut, for and during the term for which the aforesaid letters patent were granted, and the terms for which any patent for the aforesaid improvement and any other improvement or improvements thereof, or extensions for or of either thereof, may be granted." The Supreme Court of the United States, in Littlefield v. Perry, 21 Wallace, 205, held that this assignment, "taken by itself, contains, in most unmistakable language, an absolute conveyance by the patentee of his patent and inventions described, and all improvements thereon, within and throughout the States of New York and Connecticut; and that this assignment and a supplementary agreement executed between the same parties at the same time, when construed together, operated to constitute Treadwell and Perry the assignees of Littlefield, within the patent laws, in respect to the subject-matter of the assignment, and to give them, and those claiming under them, the right to sue in this court, to prevent any infringement upon their rights. On the 22d of July, 1853, Littlefield withdrew the application before-mentioned, which had been filed December 30th, 1852, and filed a new application, on which a patent was issued to him January 24th, 1854. The Supreme Court held, in the case referred to, that the assignees became, in equity, the owners of this patent of 1854, under the assignment of April, 1853; that all the patents outstanding, and the subject of the controversy in that suit, exclusive of the patent of 1851, were either reissues of the patent of 1854 or improvements upon it; and that the use of the said patents, issued after January, 1854, by Littlefield and his co-defendant Jagger, was an infringement of the rights of said. assignees. The patents so referred to were these: a patent issued June 25th, 1861; reissues in two parts, 132 and 133, made November 19th, 1861, of the patent of January 24th, 1854; reissues in four parts, 1,332, 1,333, 1,334 and 1,335, made August 26th, 1862, of the patent of January 24th, 1854, VOL. IV-40 |