Edwin Chaffee, Plaintiff In Error v. the Boston Belting Company
| Decision Date | 01 December 1859 |
| Citation | 63 U.S. 217,22 How. 217,16 L.Ed. 240 |
| Parties | EDWIN M. CHAFFEE, PLAINTIFF IN ERROR, v. THE BOSTON BELTING COMPANY |
| Court | U.S. Supreme Court |
THIS case was brought up by writ of error from the Circuit Court of the United States for the district of Massachusetts.
It was an action of trespass on the case brought by Chaffee against the Boston Belting Company, for an infringement upon a patent granted for the manufacture of India-rubber, granted to Chaffee in 1836, and extended for seven years from the 31st day of August, 1850.
The respective claims of the plaintiff and defendants are fully stated in the opinion of the court.
The presiding judge in the court below ruled that the defendants had a right to continue the same machinery for the same purposes, and in conformity with the directions contained in the specification, after the expiration and renewal of the letters patent, and, consequently, that the plaintiff could not recover.
To this ruling the plaintiff excepted, and brought the case up to this court.
It was argued by Mr. Jenckes and Mr. Clarence A. Seward for the plaintiff in error, no counsel appearing for the defendants.
The case having gone off upon a single point, the argument of the counsel for the plaintiff in error upon that point is alone reported.
The court below erred in charging the jury, that, under their title, the defendants had a right to continue to use the same machinery for the same purposes. This charge was predicated upon an assumption of title in the defendants, which they had not proved. They had proved that Goodyear, while the owner of the original term of the patent, had granted to Edwards a license for a specific purpose. They did not prove any privity between themselves and that license. They did not prove an assignment of that license to themselves. They did not prove the assent of Edwards to their use of the plaintiff's patent in the manufacture of the articles specified in the license. The only purpose for which the license seems to have been introduced was to identify the uses to which the defendants applied the plaintiff's patent, to wit: 'for the preparation and application of India-rubber to the manufacture of the articles mentioned and described in the indenture between Goodyear and Edwards.' This identification was not a justification of the use, by the defendants, of the plaintiff's patent. It proved satisfactorily the nature and extent of that use; but it proved nothing more. It did not prove that the defendants were rightfully in the enjoyment of the thing patented, during the original term of the patent.
The defendants, therefore, having failed to establish any privity between themselves and Goodyear, the owner of the original term of the patent, failed also to establish and right, as against the plaintiff, to use his patent during its extended term. The defendants, upon the record, appear as naked infringers of the plaintiff's patent.
The charge of the court below, therefore, was erroneous in assuming the existence of a license from Goodyear to the defendants, and entitles the plaintiff to a reversal of the judgment and to a venire facias de novo.
This case comes before the court on a writ of error to the Circuit Court of the United States for the district of Massachusetts. It was an action of trespass on the case, for the alleged infringement of certain rights secured by letters patent.
As the foundation of the suit, the declaration alleges, in effect, that the assignor of the plaintiff was the original and first inventor of certain improvements in the manufacture of India-rubber, and that in the year 1836 letters patent for such improvements were duly issued to him by the Commissioner of Patents, as is therein fully and correctly set forth and de scribed.
Those improvements, as is alleged in the declaration, consist in a mode of preparing the rubber for manufacturing purposes, and of reducing it to a pasty state, without the use of the spirits of turpentine or other solvents, and of applying the same to cloths, and for other purposes, by the use of heated rollers and other means, as set forth in the letters patent, saving thereby, as is alleged, a large portion of the expense of reducing the original material to a proper degree of softness, and of fitting and preparing it for the various uses to which it may be applied.
On application subsequently made to the Commissioner of Patents, in due form of law, by the original inventor, the patent was extended for the further term of seven years, from the thirty-first day of August, 1850; and the plaintiff alleges that the patentee, on the first day of July, 1853, transferred assigned, and conveyed to him all his title to the invention and to the patent for the extended term.
By virtue of that deed of transfer, it is claimed in the declaration that the plaintiff acquired the right to demand and recover the damages for all infringements of the letters patent prior to the date of the transfer, as well as for those that have been committed since that time; and, accordingly, the plaintiff alleges that the defendants, on the thirty-first day of August, 1850, fraudulently commenced the use of those improvements, without law or right, and so continued to use them to the day of the commencement of this suit; averring, at the same time, that the defendants have prepared large quantities of the native rubber for manufacturing purposes, without the use of spirits of turpentine or other solvents, thereby making large gains, and greatly to the damage of the plaintiff.
As appears by the transcript, the action was entered in the Circuit Court at the May term, 1854, but was continued from term to term until the May term, 1857, when the parties went to trial upon the general issue.
From what is stated in the bill of exceptions, it appears that one Charles Goodyear was the owner of the original letters patent on the twenty-sixth day of January, 1846, and that he continued to own them for the residue of the term for which they were originally granted. On that day he entered into an indenture with one Henry Edwards, of the city Boston, whereby, for certain considerations therein expressed, he sold and conveyed to the said Henry Edwards, his executors, administrators, and assigns, the exclusive right and license to make, use, and vend, any and all articles appertaining to machines, or in the manufacture, construction, and use of, machines or machinery, of whatever description, subject to certain limitations...
To continue reading
Request your trial
-
Lexmark Int'l, Inc. v. Impression Prods., Inc.
...In re Paper–Bag Cases, 105 U.S. at 770–71(emphasis added) (citing Bloomer v. McQuewan, Mitchell, Adams, and Chaffee v. Boston Belting Co., 63 U.S. (22 How.) 217, 16 L.Ed. 240 (1859)). In so stating the law, in terms that tied exhaustion to the absence of conditions, the Paper–Bag Cases Cour......
-
Lifescan Scotland, Ltd. v. Shasta Techs., LLC
...he “legally acquires a title” to it. Millinger, 68 U.S. (1 Wall.) at 351 (“legally acquires a title”); Chaffee v. Boston Belting Co., 63 U.S. (22 How.) 217, 223, 16 L.Ed. 240 (1859) (“passes to the hands,” “legally acquires a title”); McQuewan, 55 U.S. (14 How.) at 549–50 (“passes to the ha......
-
Sidney Henry v. Dick Company
...the paper with full knowledge of the restriction imposed by the patentee. Mr. Justice Brown, after quoting from Chaffee v. Boston Belting Co. 22 How. 217, 223, 16 L. ed. 240, 242, says (p. 'The real question in this case is whether, conceding the combination of the oval roll with the fixtur......
-
LifeScan, Inc. v. Shasta Techs., LLC
...Court considered the question of whether patent exhaustion applied during an extended patent term. Chaffee v. The Boston Belting Co., 63 U.S. 217, 22 How. 217, 16 L.Ed. 240 (1859). In doing so, the Court reiterated the principles of patent exhaustion, holding that [w]hen the patented machin......