Specific performance cannot be decreed of an agreement to convey
property which has no existence, or to which the defendant has no
title, and if the want of title was known to the plaintiff at the
time of beginning the suit, the bill will not be retained for
assessment of damages.
One who agrees to assign to another any patents that he may
obtain for improvements in certain machines, and who afterwards
invents such an improvement, and, with intent to evade his
agreement and to defraud the other party, procures a patent for his
invention to be obtained upon the application of a third person,
and to be issued to him as assignee of that person, and receives
profits under it, cannot be compelled in equity to assign the
patent or to account for the profits.
Page 128 U. S. 668
This was a bill in equity for specific performance, filed
November 12, 1887, by a citizen of New York against a citizen of
Illinois, and contained the following allegations:
On July 10, 1884, the defendant, in consideration of the sum of
$10,000 paid by the plaintiff to him, made an assignment to the
plaintiff of an interest of one-half in two patents previously
obtained by the defendant for steam boilers, and also made a
written contract, acknowledged before a notary public and recorded
in the Patent Office, by which the defendant agreed to assign to
the plaintiff any and all patents which the defendant might
thereafter obtain from the United States or the Dominion of Canada
for inventions in improvements in steam boilers, and further agreed
not to assign such inventions, or the patents obtained therefor, to
any other person. In 1885, the defendant publicly stated that he
had invented such an improvement, and explained its general plan
and construction, and afterwards combined and confederated with one
Goulding to avoid and evade the effect of the contract of July 10,
1884, and for that purpose the defendant caused to be prepared at
his expense, but in the name of Goulding, the necessary papers to
procure letters patent for this invention, and Goulding, without
any consideration received from the defendant therefor, assented to
be used in that regard as the alleged inventor of the improvement,
and at the request and by the procurement of the defendant, filed
an application under oath for a patent for it, which application
was allowed, and Goulding, before the issue of the patent, assigned
in writing to the defendant all his interest in the improvement and
in the patent therefor, and on December 14, 1886, a patent was
issued to the defendant accordingly, as assignee of Goulding, a
certified copy of which was made part of the bill. The bill further
alleged that the defendant was, and Goulding was not, the original
and first inventor of the improvement so patented; that the
defendant had engaged in the manufacture and sale of boilers under
this patent, and had received, and was receiving, great benefits
therefrom; that the patent was of value exceeding the sum of
$5,000, exclusive of interest and costs.
Page 128 U. S. 669
The bill prayed for a decree that the defendant assign this
patent to the plaintiff, for an adjudication that the title to it
equitably vested in the plaintiff at the date of its issue, for an
account of profits received by the defendant from its use, for a
preliminary injunction against transferring or encumbering the
patent or manufacturing or selling boilers containing the
improvement described therein, and for further relief.
The defendant demurred to the bill (1) for want of equity; (2)
for multifariousness in embracing two separate and distinct causes
of action, one to enforce specific performance of a contract, the
other for the infringement of a patent; (3) because, as appeared by
the allegations of the bill, the patent was absolutely void, and no
suit could be maintained, either to compel its transfer or for
infringement thereof.
The circuit court sustained the demurrer for the third reason,
and dismissed the bill. 33 F. 293. The plaintiff appealed to this
Court.
Page 128 U. S. 671
MR. JUSTICE GRAY, after stating the facts as above, 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, 1 Coop.Temp.Cottenham 295;
Ferguson v Wilson, L.R. 2 Ch. 77;
Kempshall v.
Stone, 5 Johns.Ch. 193;
Morss
Page 128 U. S. 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.
Page 128 U. S. 673
In
Ambler v.
Whipple, 20 Wall. 546, cited by the 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, afterwards 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 proceeded 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.
