Rice v. Boss

• Decision Date: 11 May 1891
• Citation: 46 F. 195
• Parties: RICE v. BOSS.
• Court: U.S. District Court — Northern District of New York

46 F. 195

RICE v. BOSS.

United States Circuit Court, N.D. New York.

May 11, 1891

George B. Selden, for complainant.

S. D Bentley, for defendant.

COXE J.

This is an action in equity, founded upon letters patent No. 172,608 granted to John W. Cassidy, January 25, 1876, for an improved fruit-drying apparatus. On the 4th of March, 1881, the patentee conveyed to the complainant the right, under the patent, for the county of Wayne in this state, 'to use and manufacture and sell rights to use in said county, and in no other place or places. ' The defendant insists that this instrument is not a territorial assignment, but a license merely, and that the complainant has no standing to maintain this suit alone. The patent granted to Cassidy 'the exclusive right to make, use and vend the said invention throughout the United States and the territories thereof. ' Unless the complainant possesses the same right for the county of Wayne, vis.: 'The exclusive right to make, use and vend the invention,' it is entirely clear that he cannot maintain the action in his own name. In the case of Waterman v. Mackenzie, 11 S.Ct. 334, the supreme court say:

'The patentee or his assigns may, by instrument in writing assign, grant and convey, either, (1) the whole patent comprising the exclusive right to make, use and vend the invention throughout the United States; or, (2)an undivided part or share of that exclusive right; or, (3) the exclusive right under the patent within and throughout a specified part of the United States. * * * Any assignment or transfer, short of one of these, is a mere license, giving the licensee no title in the patent, and no right to sue at law in his own name for an infringement. * * * The grant of an exclusive right under the patent within a certain district, which does not include the right to make, and the right to use, and the right to sell, is not a grant of a title in the whole patent-right within the district, and is therefore only a license.'

In Mitchell v. Hawley, 16 Wall. 544, the conveyance was very similar to the one at bar. The language was as follows:

'The exclusive right to make and use, and to license to others the right to use the said machines in the said states of Massachusetts and New Hampshire, and in no other place or places.'

The supreme court regarded this as a license only.

In Gayler v. Wilder, 10 How. 477, the agreement granted 'the exclusive right to make and vend the Salamander safe in the city, country and state of New York,' but it reserved to the grantor the right to manufacture the safes at a greater distance than 50 miles from the city of New York and sell them in the state on paying a royalty to the grantee. It was decided that this was only a license, the court holding, that in order to enable the assignee to sue in his own name 'the assignment must undoubtedly convey to him the entire and unqualified monopoly which the patentee held in the territory specified, excluding the patentee himself, as well as others. Any assignment short of this is a mere license.'

In Oliver v. Chemical Works, 109 U.S. 75, 3 S.Ct. 61, the grant was of 'the exclusive right to use, within the territory specified, the patented acid in making self-raising flour, and to use and sell in said territory the flour so made. ' The court held this to be a license. It was decided, further, that in order to give a territorial grantee an exclusive right no interest must be left in the grantor for that territory, as to anything granted by the patent.

In Hatfield v. Smith, 44 F. 355, it was held that a contract which transferred 'the sole and exclusive right to manufacture and sell and vend the patented improvements throughout the United States, the purchasers to have the right to use,' was nothing more than a license. See, also, Rubber Co. v. Goodyear, 9 Wall. 788; Potter v. Holland, 4 Blatchf. 211; Gamewell Co. v. Brooklyn, 14 F. 255; Ingalls v. Tice, Id. 297; Wilson v. Chickering, Id. 917; Bogart v. Hinds, 25 F. 484; Hammond v. Hunt, 4 Ban.& A. 111; Sanford v. Messer, 1 Holmes, 149.

The rule deducible from these authorities is very clear. In the case of territorial grants the grantee, if he seeks to maintain an action in his own name, must be supreme within the assigned territory and possess all the rights of the patentee. He must be able to do all that the patentee could do, if the conveyance had...