Adams v. Burke

Delivered the opinion of the court.

The question presented by the plea in this case is a very interesting one in patent law, and.the precise point in it has never been decided by this court, though cases involving some of tile considerations which apply to it have been decided, and others of analogous character are frequently recurring. The vast pecuniary results involved in such cases, as well as the public interest, admonish us to proceed ith care, and to- decide in each case no more than what is directly iu' issue.

We have repeatedly held that where a person had purchased a patented machine of the patentee or his assignee, this purchase carried with it the right to the use of that machine so long as it was capable of use, and that the expiration and renewal of the patent, whether in favor of the original patentee or of his assignee, did not affect this right. The true ground on which these decisions rest is that the sale by a person who has the full right to make, sell, and use such a machine carries with it the right to the use of that machine to the full extent to which it can be used in point of time.

The right to manufacture, the right to sell, and the right t'o use are each substantive rights, and may be granted or conferred separately ,by the patentee.

Bui, in the essential nature of things,, when the patentee, or the person having his rights, sells a machine' or instrument whose sole value is in its use, he receives the consideration for its use and he parts with the right to restrict. that use. The article, in the language of the court, passes without the limit of the monopoly. That is to say, the patentee or his assignee having in the act of sale received all the royalty or consideration which he claims for the use of his invention in that particular machine or instrument, it is open.to the use of. the purchaser without further restriction on account of the monopoly of the patentees.

If this principle be sound as to a machine or instrument whose use may be continued for a number of years, and may extend beyond the existence of the patent, as limited at the time of the sale, and into the period of a renewal or extension, it must be much more applicable to an instrument or product of patented manufacture which perishes in the first use of it, or which, by that first use, becomes incapable of further use, and of no further value. ' Such is the case with the coffin-lids of appellant’s patent.

It seems to us that, although the right of Lockhart & Seelye to manufacturé, to sell, and to use these coffin-lids-was limited to the circle' of ten miles around Boston, that a purchaser from them of a single coffin acquired the right to use that coffin for the purpose for which all coffins are used. That so far as the use of it was concerned, the patentee had received his consideration, and it was no longer within the monopoly of the patent. It would be to engraft a limitation upon the right of use not contemplated bv the statute nor within the reason of the contract to say that it could only be used within the ten-miles circle. Whatever, therefore, may be the rule when patentees subdivide territorially their patents, as to the' exclusive right io make or io sell within a limited territory, we hold that in the class of machines or implements we have, described, when they are once lawfully made and sold, there is no restriction on their use to be implied for the benefit of the patentee or his assignees or licensees.

A. careful examination of the' plea satisfies us that the defendant, who, as an undertaker, purchased each of these coffins and used it in burying the body which he was employed to bury, acquired the right to this use of it freed from any. claim of the patentee, though purchased within the ten-mile circle and used without it.

The decree.of the Circuit Court dismissing the plaintiff’s bill is, therefore,

Affirmed.

Bloomer v. McQuewan, 14 Howard, 549; Mitchell v. Hawley, 16 Wallace, 544.