Wade v. Metcalf

after stating the case as above reported, delivered the opinion of the court.

- The decision of this case turns upon § 4899 of the’ Revised Statutes, by which it is enacted that “ every person who purchases of the inventor or discoverer, or with his knowledge and consent constructs any newly invented or 'discovered machine or other patentable article, prior to the application by the inventor or discoverer for a patent, or who sells or uses one so constructed, shall have the right to use and vend to *205 others to be used the specific thing so made or purchased, without liability therefor.”

This section clearly defines four classes of persons who shall have the right to use, and to vend to others to be used, a specific patentable machine:

First. Every person “ who purchases of the inventor ” the machine before his application for a patent.

Second. Every person who “with his knowledge and consent constructs” the machine before the application.

Third. Every person “who sells” a machine “so constructed,” that is to say, which has been constructed with the knowledge and consent of the inventor by another person.

Fourth. Every person who “ uses one so constructed,” that is to say, constructed with the inventor’s knowledge and consent by another person.

In order to entitle a person of any of these four classes to use and vend the machine, under this section, the machine must originally have been either purchased from the inventor, or else constructed with his knowledge and consent, before his application for a patent; and it may well be that a fraudulent or surreptitious purchase or construction is insufficient. Kendall v. Winsor, 21 How. 322; Andrews v. Hovey, 124 U. S. 694, 708.

But after a machine has been constructed by any person with the inventor’s knowledge and consent before the application for a patent, every other person who either sells or uses that machine is within the protection of the section, and needs no new consent or permission of the inventor.

If the first two clauses of the section, taken by themselves, leave the matter in any doubt, the succeeding clause, including every person “ who sells or uses one so constructed,” makes it perfectly clear that the implied license conferred by the-section sets the specific machine free from the monopoly of the patent in the hands of any person, just as if that person were the lawful assignee of. one holding the machine under a purchase or an express and unrestricted license from the inventor. McClurg v. Kingsland, 1 How. 202; Bloomer v. McQuewan, 14 How. 539, 549; Bloomer v. Millinger, 1 Wall. 340; Adams v. Burke, 17 Wall. 453; Birdsell v. Shaliol, 112 U. S. 485, 487.

*206 In the case at bar, the machines of the plaintiff’s invention were not purchased, from him by the defendants. But they were constructed with his knowledge and consent by a partnership of which he and the defendants were the members. It was strongly argued for the defendants, that a sale or a license from the inventor to two or more partners or tenants in common confers upon each a right to use and to sell the subject of the sale or license, and that the defendants, therefore, come within the second class of persons defined in the statute. But it is unnecessary to determine whether that is so or not, because, if it is not, the defendants clearly come within the fourth class, being persons who use machines which have been constructed with the knowledge and consent of the inyehtor before his application for a patent.

The peculiar provisions of the agreement by which the part-, nership between the plaintiff and the defendants was dissolved did not, in terms or in legal effect, enlarge or diminish the rights of either party, independently of that agreement, in the machines in question.

Decree affirmed.