Roger B. Taney

“ If the original inventor of a machine abandons the use of it, and does not take out a patent for it, no other person can entitle himself to patent for it. Evans v. Eaton, 1 Pet. C. C., 323.
In an action for a violation of a patent granted by the United States for an alleged original invention, the plaintiff must satisfy the jury that he was the original inventor in relation to every part of the world. ”

“ The inventor of a new and useful improvement certainly has no exclusive right to it, until he obtains a patent. This right is created by the patent, and no suit can be maintained by the inventor against any one for using it before the patent is issued. But the discoverer of a new and useful improvement is vested by law with an inchoate right to its exclusive use, which he may perfect and make absolute by proceeding in the manner which the law requires. Fitzgerald possessed this inchoate right at the time of the assignment. ”

“ In a country where the principle of the patent laws is recognized, where an invention is regarded as property which may be set apart for a person's own exclusive use, is it not assignable, independent of any statute enactment? ”

“ It is submitted that, by the requirements of the patent law, the patentee must be not only an original inventor, but the original inventor, and that the patent will in all cases be defeated by proof of a prior invention. ”

“ The first question is, whether the conveyance from Fitzgerald to Enos Wilder, before the issuing of the patent, conveyed the patent itself when issued. The error on the other side is in considering an invention as a sort of chose in action. An invention, however, is as much property as a horse or a house, and when patented becomes the exclusive property of the patentee. ”

“ In consideration whereof, said Herring agrees with said Benjamin G. Wilder to pay to him, for the use of the right aforesaid, one cent a pound for each and every pound said safes may weigh when finished and sold; which sum is to be paid monthly so long as said patent remains in full force, and until the same has been set aside by the highest court of the United States to which the same may be carried; but said Herring agrees to pay the one cent a pound for the space of two years, at all events, and whether said patent shall be declared good or not. ”

“ It will be readily conceded that the right of an assignee to sue in his own name must, if it exist, be statutory. But no section of any patent law in force bestows this right upon the assignee of an improvement about to be patented, such as was Enos Wilder.
The act of 1793 says, every invention shall be assignable. The eleventh section of the act of 1836 provides that 'every patent shall be assignable in law,' etc. It speaks of the 'exclusive right under any patent,' and of 'the thing patented.' Yet here there was no patent. The assignment is of an improvement intended to be patented. ”

“ The hardship of this doctrine will be more apparent when it is considered that, if the plaintiff recover, the defendants will not be thereby exonerated from liability to Herring, the local assignee, but may be held accountable to him, and thus be compelled to pay these very damages a second time to another party.
There can be no damage without an injury done to some right possessed by the plaintiff. But here the plaintiff possesses no right. How, then, can he be damaged?
By this agreement, the advantages and profits of the patent in the city and state of New York are the property of Herring ”

“ The edges and openings for the doors are to be neatly finished, as in other chests. I then take plaster of Paris or gypsum, and, having boiled it or baked it in an oven, and calcined it, and reduced it to a powder, I mix it with water till it is about the consistency of cream or thin paste, so fluid as that it may readily be poured into the space left as above to receive it, and I then fill all the space with the plaster of Paris, putting in some sheets of mica between the inner and outer chest, to aid, if necessary, in checking the progress of the heat. ”

“ It will be seen, however, that this part of the agreement is a penalty. If he, Wilder, makes safes in New York to be sold in New York, he shall pay, &c. A license can maintain an action.
The facts as to the Conner safe should have been left to the jury. This was not a case where the invention had been lost or forgotten; but within a few years a man makes for his own use, and actually uses in his own counting-house, a safe constructed upon the same principles as that which is the foundation of this suit. The law requires that a patented article should not have been made or used before. ”

“ That section provides,--
'That every person or corporation who has, or shall have, purchased or constructed any newly invented machine, manufacture, or composition of matter, prior to the application by the inventor or discoverer for a patent, shall be held to possess the right to use, and vend to others to be used, the specific machine, manufacture, or composition of matter so made or purchased, without liability therefor to the inventor, or to any other person interested in such invention ”

“ They would therefore derive no advantage from the invention here. It would confer no benefit upon the community, and the inventor therefore is not considered to be entitled to the reward. But if the foreign discovery is not patented, nor described in any printed publication, it might be known and used in remote places for ages, and the people of this country be unable to profit by it. ”

“ The gypsum alone, when properly prepared, and properly placed in the space left to receive it, and made to fill it completely, is quite sufficient to resist, for a long space of time, the most intense heat. ”