
    * Judah Bliss & Al. versus Joel Negus.
    A promissory note given in consideration of the assignment of a patent right, which had been fraudulently obtained, was held void, although certain materials had been furnished, and certain instructions given by the promisee to the promisor in the art described in the patent
    Case upon a promissory note made by the defendant, payable to the plaintiffs.
    Upon trial of the action at the last April term in this county, before Sedgwick, J., a verdict was taken for the defendant, subject to the opinion of the court upon the judge’s report.
    From that report it appeared that the note declared on, and another of the same amount, were given in consideration of a deed of assignment dated March 31st, 1806/a copy of which came up in the case. After reciting that one John Sibley, on the 13th of December, 1803, obtained letters patent from the government of the United States, securing to him, his heirs, &c., for the term of fourteen years, the exclusive right and liberty of making, using, and vending to others, to be used, a new and useful improvement in painting rooms, ornamenting ceilings, borders, &c., and thence deriving the said patent right, through several mesne conveyances to the plaintiffs, the deed assigns to the defendant, for the consideration of one hundred and fifty dollars, all the right and privilege so conveyed to the plaintiffs, to be exercised within certain enumerated towns in the county of Worcester, with a covenant to warrant and defend the same against the claims of any pther person.
    It was agreed at the trial, that the letters patent, mentioned in the assignment, were duly issued in conformity to the statute; but it appeared in evidence that the invention mentioned in the letters patent was not the invention of the patentee, and that the art of that invention had been long before the patent publicly known and used, both in England and in the United States ; and that this was known to the patentee at the time he obtained the letters patent. It also appeared, and was admitted to be true, that at the time of making the deed above mentioned, none of the assignments mentioned therein had been recorded in the office of the secretary of state.
    * On this evidence the judge ruled that a verdict ought to be found for the defendant; and a verdict was found accordingly. — But the judge observes, that what gave rise to his report were the following facts : —
    It appeared by the evidence that the notes and the assignments were made and executed in the forenoon of the 31st of March, 1806. Afterwards, on the same day, and while the parties continued together, there were delivered to the defendant by the order of the plaintiffs, certain samples in relation to the invention mentioned, and some paint proper to be used in the art; and at the same time one of the plaintiffs undertook to send to the defendant two persons to instruct him in the art. In pursuance whereof a man and boy were sent and labored in the art, in presence of the defendant, a part of two days.
    Hereupon the plaintiffs’ counsel insisted, that from this evidence the jury ought to presume, that the articles so delivered, and the labor so performed, made part of the consideration of the note; and if so, that that circumstance would give validity to the note. ' Upon this point the judge instructed the jury to inquire whether those articles and labor formed any part of the consideration for which the note was givenand if they were of that opinion, to find by their verdict the value of the articles and labor, which they accordingly found to be fourteen dollars.
    The action stood over to this term, upon the motion of the plaintiffs for a new trial for the misdirection of the judge And now,
    
      Bliss, of counsel for the plaintiffs,
    contended that the deed of assignment in the case contained in itself a sufficient consideration to support the action upon the notes. Admitting the patent to be void, yet the deed contains sufficient covenants to form a consideration, and upon which the defendant may have his remedy, if he is entitled to any. A mere recital in a deed creates a covenant.  In this deed there is a recital that the patentee obtained the right, and that by * sundry assignments that right has accrued to the plain tiffs. Now, if either of these recitals are not true, an action of covenant will lie. They form, then, a valuable consideration for the note, and the plaintiffs were entitled to a verdict for the whole sum secured by it.
    But if the deed itself does not furnish a sufficient consideration, yet the case finds that materials and labor were furnished by the plaintiffs, as a part of the same transaction, and these of themselves formed a valuable consideration sufficient to support the promise. They were a loss to the plaintiffs, and whether this was greater or less, the plaintiffs were entitled to recover the amount of the note — If this position should be overruled, it seems very clear that the plaintiffs are entitled to recover on this note the price of the labor and the materials furnished by them ; and if they were entitled to no more, the verdict ought to be set aside and a new trial granted. 
    
    
      Allen, for' the defendant,
    insisted, that as nothing passed to him by the assignment, there was no consideration for the note. The covenants are all attached to the thing pretended to be granted, which being in fact nothing, the covenants are perfectly null. The plaintiffs must have known that the mesne assignments were never recorded. The case of Hayne & Al. vs. Maltby 
       is exceedingly like the present. Where, as in this case, nothing at all is conveyed, the rule of caveat erwptor does not apply. 
    
    As to the notion that the paints and labor were a sufficient con sideration, it is a principle of law well established, that where a part of the consideration of a contract is false, the whole contract is void.  Besides which, the case finds that the paints were delivered and the labor performed after the notes were given.
    
      
       1 Esp. Dig. 268. — 1 Leon. 122, Severn vs. Clark.
      
    
    
      
       1 Bos. & Pul. 101, Marchington vs. Vernon & Al. note (c.) — 3 Bos. & Pul. 149, note (a.)
    
    
      
       3 D. & E. 438.
    
    
      
       3 Bos. & Pul. 162, Johnson vs. Johnson. — Doug. 655, Bree vs. Holbech.
      
    
    
      
      
         Cro. Eliz. 848, Coulston vs. Carr. — Hob. 5, 126.
    
   Sedgwick, J.,

delivered the opinion of the Court to the following effect: —

The demand of the plaintiffs is resisted on the ground, that there was no valid and sufficient consideration for the promise expressed in the note, on which the action was brought.

*on the 13th of December, 1803, one John Sibley obtained from the government of the United States a patent for the term of fourteen years, for the exclusive right of making and vending what is therein called a new and useful improvement in painting rooms, ornamenting ceilings, &c.

After several mesne assignments, one was made to Judah Bliss and John Bice, the present plaintiffs, of the right of using and vending within certain specified limits, the art described in the letters patent; and on the day on which the note was made, Bliss and Bice assigned to the defendant the right of using and vending, within the limits assigned them, the same art. At the time of the last assignment, none of those previous thereto had been recorded in the office of the secretary of state, as required by the act of congress. In consideration of this assignment, this note and another of the same amount were made.

The art, for which the letters patent were obtained, was not t.he invention of Sibley, the patentee, but, on the contrary, had, long before the issuing of the patent, been publicly known and practised, as well in this country as in England; and this was known to the patentee at the time the letters patent issued. The letters patent were then obtained by fraud and false swearing, and were utterly void. The consequence is, that the patentee obtained nothing by his patent; and of course nothing was conveyed by the subsequent assignments. The assignor lost nothing, nor did the assignee acquire any thing. And besides, Bliss and Bice, at the time of their assignment to the defendant, knew that they had not acquired a complete and valid title; for they had not procured their assignment to be recorded.

As, then, the assignment to the defendant was merely void, and conveyed nothing, there can be no pretence that it is a sufficient consideration to render valid in law the note which was given.

Nor did the counsel for the plaintiffs insist that the assignment was in itself a sufficient consideration : * but he argued that the deed of assignment to the defendant contained covenants, on which an action can be supported; and that a cause of action is a sufficient consideration to maintain an action on the note.

It is evident that, if the principle relied upon could apply in this case, the only consequence would be, to authorize the plaintiffs to recover, as a ground for the defendant to recover against them in an action of covenant on the deed; and the reasoning must be very strong and apparent, which would authorize such a judgment.

But we. are all satisfied that the words will not admit of such a construction. The words principally relied upon are that “ whereas Sibley did obtain from the government of the United States of America letters patent, securing to the said Sibley the exclusive right and liberty of making, using,” &c. — These words are used only by way of preamble, and do not assume any express obligation or undertaking; nor indeed do they contain any direct affirmation. — The other words of recital, which are expressed in the deed, and which can by possibility be considered as exp-essing covenants, are those which state the several assignments which have been made; and whether such assignments have or have not been made is wholly unimportant, because they would undoubtedly be wholly ineffectual.

But there is one express covenant. Rice and Bliss covenant with the defendant, that they would warrant and defend to him, his heirs and assigns, what was the subject of the assignment, against the claims of any other person. The subject of this assignment was “all the right and privilege” conveyed to them, as derived from the letters patent granted to Sibley. Now, it has been already shown, that there was nothing conveyed to Sibley by the letters patent; and consequently there was nothing, which could be beneficial to the defendant, for this covenant to operate upon.

As to the principal question in this case, the case of *Hayne & Al. vs. Maltby, cited at the bar, goes much further than is necessary to determine this. There A, asserting that he had a right to a patent machine, covenanted with B, that he might use it in a particular manner, in consideration whereof B covenanted that he would not use it in any other. In an action brought by A upon that covenant, it was determined that B was not estopped by his covenant from pleading in bar to that action, that the invention was not new, or that A was not the inventor; but that he might show that the patent was void.

But there is another ground, on which the plaintiffs’ counsel rested his right to recover, either the whole amount of the note, or at least so much as was the value of the samples, paints, and labor, which were furnished by the plaintiffs to the defendant.

It is true, that if a promise be made on two considerations, and one of them be invalid or void, and the other be good and lawful, the promise is binding. It is also true, that if a promise be made on two considerations, and the one be fraudulent, unlawful, or immoral, and the other good, the promise is void. It does not appear to me that this belongs to either class of these cases. It does not appear that the samples, paints, and labor, furnished by the plain tiffs, were in any degree valuable or useful to the defendant, but as subservient to the art, which was pretended to be conveyed by the issignment The whole was one compound, connected subject, the adjuncts of which were tainted by the principal substance. We are therefore all of opinion, that the defendant is, upon the whole matter, entitled to judgment, 
      
      
         [It has been held that where any benefit has been received from the assignment of letters patent, or a license to use the thing patented, the price paid for it cannot be recovered back, on the patent being declared void. Taylor vs. Hare, 4 B. & P. 260. ■— Mortimer vs. Fleming, 6 D. &. R 186. — Davies, 307. — Williams vs. Hicks, 2 Vermont Rep. 36. — Ed.]
     