Dela Vergne Refrigerating Mach Co v. Featherstone
Decision Date | 09 January 1893 |
Docket Number | No. 1,009,1,009 |
Citation | 147 U.S. 209,37 L.Ed. 138,13 S.Ct. 283 |
Parties | DELA VERGNE REFRIGERATING MACH. CO. v. FEATHERSTONE et al |
Court | U.S. Supreme Court |
Statement by Mr. Chief Justice FULLER:
This was a bill in equity, charging appellees with infringement of letters patent of the United States No. 175,020, issued to 'James Boyle, his heirs or assigns,' March 21, 1876, for an improvement in gas-liquefying pumps.
The bill set forth, among other things, a full history of the proceedings before the patent office, and alleged that, shortly after filing his application for the patent. James Boyle died, and that thereafter his administrator, who was also an assignee of a half interest, prosecuted the application, paid the final fee, and took out the patent, it being issued in the name of 'James Boyle, his heirs or assigns.'
Appellees demurred generally to the bill, and, the cause having been heard by the circuit court thereon, a decision was announced sustaining appellees' demurrer, on the ground that, Boyle having previously died, there was no grantee in being capable of taking at the time the patent was issued, and hence that the patent never had any validity. The opinion will be found reported in 49 Fed. Rep. 916.
A decree was thereupon entered dismissing the bill for want of equity, and complainant appealed to the circuit court of appeals for the seventh circuit, which entered an order certifying several questions or propositions of law upon which it desired the instruction of this court for their proper decision. These questions or propositions of law are as follows:
'Thereafter, and on the 27th day of November 1875, and while said application was still pending in the patent office, James Boyle died, leaving him surviving a widow and four children.
'Thereafter the said application was prosecuted by the said attorneys under the direction of Thomas L. Rankin, who had been appointed temporary administrator of the estate of James Boyle, deceased March 9, 1876, and who obtained the said patent, and paid all the patent office and solicitors' fees therefor. The patent issued March 21, 1876, and the grantees therein expressed were 'James Boyle, his heirs or assigns.'
'On these facts the instruction of the court is desired upon the question:
'(1) Whether the grant to James Boyle, his heirs or assigns, was void because of the death of Boyle before the patent was issued, or whether such grant was valid on the ground that it should be construed in the alternative as a grant to James Boyle or his heirs or assigns, the words 'heirs or assigns' including a grantee or grantees in being capable of taking the patent, and the grant inuring to his or their benefit.
'II. Prior to the aforesaid application of James Boyle for a patent he made a contract with said Thomas L. Rankin, by which Rankin agreed to advance money to apply for and obtain the patent, and Boyle agreed to assign to Rankin one-half interest in the invention and patent.
'On December 2, 1875, after the death of James Boyle, and while the application for the patent was pending in the patent office, Rankin made an agreement with Theresa Boyle, the widow of James Boyle, then acting as executrix de son tort, in the words and figures following:
"Houston, Texas, December 2, 1875. Article of agreement between T. L. Rankin and Mrs. James Boyle. T. L. Rankin, of the first part, agrees to complete the ice machine commenced by himself and James Boyle, and to pro- vide for Mrs. Boyle while said machine is under construction, until next spring, say May first; and also to press the application for patents on the part of said machine claimed by James Boyle, and, in case said machine is a success, and said patents are obtained, is to use his best efforts to introduce the same, and to divide with Mrs. Boyle the profits of said business until she shall have received five thousand dollars for her share after which Mrs. James Boyle agrees to release any further interest in said patents to be obtained and the machines then in use, and from this date agrees that the said T. L. Rankin shall operate and control any interest James Boyle had pertaining to ice machines, together with his interest in the Arctic Ice Company. Stock to vote, proxy of same. T. L. Rankin. Theresa Boyle. Witness: W. T. Scott.'
'Neither Theresa Boyle, nor her children, nor Thomas L. Rankin ever repudiated the proceedings whereby said patent was obtained, but enjoyed the beneficial ownership thereof, and sold their interests therein for a valuable consideration.
'On these facts the instruction of the court is desired as to the following questions:
'(2) Whether the above-quoted instrument should, under the above facts, be construed as an assignment to Thomas L. Rankin.
'(3) Whether the patent should be construed as a grant to Thomas L. Rankin as assignee.
'(4) Whether, under the above-recited facts, the patent should be held to be obtained by the authority of Theresa Boyle as administratrix, as well as of Thomas L. Rankin.
'(5) Did such amendment render the patent void?
'(6) Is the patent void because no oath was filed after Boyle's death?
'It also appearing that the cause of action below was disposed of upon a demurrer filed to appellant's bill and exhibits, which demurrer the court below sustained, and dismissed the bill, and no witnesses being examined in said cause, it is further ordered that the record as printed in this cause be also certified up as a full statement of facts upon which the questions and propositions stated for the instruction desired from the supreme court of the United States are based; and the clerk of this court is hereby directed to transmit to the clerk of the supreme court of the United States a certified copy of said record, together with this certificate.'
Sections 4884, 4886, 4895, and 4896 of the Revised Statutes are as follows:
Ephraim Banning, Thos. A. Banning, and Edmund Wetmore, (Charels H. Aldrich, of counsel,) for appellant.
L. L. Bond and C. E. Pickard, for appellees.
[Argument of Counsel from pages 214-220 intentionally omitted]
Mr. Chief Justice FULLER, after stating the facts in the foregoing language, delivered the opinion of the court.
The grant was to 'James Boyle, his heirs or assigns,' and in this followed the language of section 4884 of the Revised Statutes. But, although Boyle made the application, he was dead at the time the patent issued, and it was therefore held by the...
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