
    J. Thomas Jones, App’lt, v. George A. Reynolds, Resp’t.
    
      (Supreme Court, General Term, Fourth Department,
    
    
      Filed April, 1887.)
    
    1. Invention—Unpatented is property—Assignable.
    An invention before letters are issued may be sold, assigned and transferred, inasmuch as it is regarded by law as property
    
      &. Same—Sale of—Statute op frauds
    At the time of the alleged sale of an invention, no writing was made between the parties, no payment was made at that time, or at any other, -upon the alleged contract of sale, and no delivery of the thing sold was made, except as follows: At that time the model, or illustration, of the invention had received some work and labor thereon by the plaintiff; and two halves of a certain iron last were furnished to the plaintiff, and he -claimed to have devised and constructed the device in question and attached it thereto After this they were returned and left with the defendant, with the additions made thereto. No letters patent were issued upon the -supposed invention to the plaintiff, but some time thereafter were issued to •defendant, who applied therefor Held, that the defendant acquired no title to the invention if he were not the inventor, and that the alleged sale was void under the statute of frauds. Follett, J , dissenting.
    8. Same—Defense to action for price of invention.
    Where a valueless invention is the subject of sale, in an action for the contract price thereof, it may be shown, by way of defense, that the supposed invention had no value or usefulness, because impracticable. Follett, J.. dissenting.
    4. Same—Evidence—May show that plaintiff was not inventor.
    It was competent for the defendant to show upon the trial that he was the originator of the idea claimed by the plaintiff to -have been his invention
    Appeal from a judgment of nonsuit granted in the Oneida circuit.
    Plaintiff alleges that he is the original and first discoverer and inventor of a certain valuable improvement or device in metal lasts, designed to be used in the manufacturing of hoots and shoes, and was the sole owner of said device or invention That said invention was complete and perfected at the time of the sale, and that on the 15th of January, 11884, this plaintiff, in consideration of the sum of $500, to be paid him by defendant therefor, and which said sum of $500 defendant then and there promised and agreed to pay to plaintiff therefor, duly sold, assigned and set over unto said defendant the said invention or device, -and all his Tight, title and interest therein, and the right to use the same in the manufacture of boots and shoes. That the defendant then and there took possession and control thereof, and accepted and appropriated and used the same, and ■without the knowledge or consent of plaintiff, upon his own application and upon the specifications sworn to by himself, procured a patent of the United States to be issued upon said invention to defendant in his own name as patentee.
    
      Defendant denies all the allegations of the complaint.
    
      William Townsend, for app’lt; Edwin H. Misley, for resp’t.
   Hardin, P. J.

Appellant’s position that mechanical invention is property prior to being patented, and that it belongs exclusively to the author or inventor seems to be sound.

In Gayler v. Wilder (10 How. [U. S.], 477) it was held that an assignment “which purported to convey to the assignee all the inchoate right which the assignor then possessed, as well as the legal title which he was about to obtain. was sufficient to transfer the right to the assignee, although a patent afterwards was issued to the assignor.”

In making that determination, there was an extensive discussion of the question whether “an invention is regarded as property which may be set apart for a person’s own exclusive use.” In the course of his argument in the affirmative, Mr. Webster said: “What is the reason that an invention, which is recognized as property, shall not be transferable like other property, there being nothing in the statute to prohibit it ?”

Mr. Chief Justice Taney said, in speaking of the assignment under consideration, that took effect “upon the imperfect and inchoate interest which he (the assignor) actually possessed.” The contrary opinion was maintained by three dissenting judges. The case, nevertheless, remains an authority to the appellant’s proposition, that an invention before patent is issued may be sold, assigned and transferred, inasmuch as it is regarded as property. Palmer v. De Witt, 47 N. Y., 532; Potter v. McPherson, 21 Hun, 559; Tabor v. Hoffman, 41 id., 5; Hammer v. Barnes, 26 How. Pr. Rep.. 174.

It appears by the undisputed evidence in the case, that at the time of the alleged sale, no writing was made between the parties. No payment was made at that time or at any other upon the alleged contract of sale, and no delivery of the thing sold was made at the time of the sale or at any other time thereafter, although at the time of the alleged sale the model or illustration of the invention had received some work and labor thereon by the plaintiff. Two halves ■of the iron last were furnished to the plaintiff, and he ■claims to have “devised and constructed the device in question, and arranged a socket surrounding the post in the bottom of the last, and the catch and spring for extending the two halves and holding them in position.”

After the labor bestowed upon them by the plaintiff, and the additions made thereto, they were returned to and left vzith the defendant. No letters patent were ever issued upon the supposed invention to the plaintiff. Some time thereafter, ■ the defendant applied for and obtained letters patent for “a combination of the catch and spring, with jointed séctions and a post let into the bottom section by a dovétail slot,”' and received letters patent in accordance with section 4884 of the United States Revised Statutes, page 945. Upon the trial, there was a dispute between the parties as to whether or no the plaintiff was the inventor, of the defendant himself the inventor of the idea which was used in the adjustment of the catch and spring. If the plaintiff was the inventor, it would seem that the letters patent issued to the defendant would give him no legal title to the invention. See section 4886, United States Revised Statutes.

Plaintiff, in his testimony, seeks to maintain that there was an agreement on the part of the defendant to pay him $500 for the invention if he took it and used it. He testifies that the defendant said, on the occasion of the alleged verbal arrangement between them, viz. : “ If I take it, and make any use of it I will give you five hundred dollars for it,” and that at the interview he called in Mr. Owens, and said to him that plaintiff “has got an invention, and he wants $500 for it. If I take it and use it at all, I am to give him so much for it. I told him any time when he got ready for the thing to be patented, the patent would be issued and assigned to him.” (No patent was ever issued to the plaintiff. No written assignment of the invention was ever tendered to the defendant by the plaintiff )

The defendant denies that any agreement such as averred and sworn to by the plaintiff was made, but states the conversation to have been as follows, viz.: “I don’t know whether I can use this thing or not. If I am going to use it on all our lasts, I would willingly give you $500. If we use it on half, I will give you $250; if we don’t use it on any, I don’t want to give a cent for it.” Plaintiff replied, then, when I said that “that is satisfactory to me.” Then, says I: “Mr. Jones, let us have a writing to that effect, setting forth all these things, so we can have no misunderstanding. ” Plaintiff replied: 1 ‘ What do I want better than your word,” and refused to have a writing executed. The defendant’s version of the conversation was corroborated by the witness, William Owens.

The plaintiff insisted at the trial that the defendant had, by including the device in the combination for which he had obtained a patent, made “use” of the plaintiff’s invention, insisting that the procuring of the patent was such use as answered the requirement of the contract as stated by the plaintiff.

We think the plaintiff’s position cannot be sustained. As before observed, the defendant acquired no title to the invention of the plaintiff from the letters patent obtained by him, if it be assumed that the plaintiff was the inventor, and not the defendant. The defendant made the application for the letters patent obtained by him with the knowledge and with the assent of the plaintiff; and in order to obtain them he was obliged to take the position, as the plaintiff well knew, that he was the inventor of the combination referred to in his specifications for letters patent.

Second. We think the strength of the evidence fairly supports a construction of the contract between the parties, which leaves the use to be made of the invention at his practical option in and about the business of the defendant. At that time the defendant had been for some nineteen years the proprietor of a large manufacturing establishment, employing 500 hands, in the city of Utica, in the .manufacture or boots and shoes, as was well known to the plaintiff, and it was in reference to his business that the treaty was had, and we think the weight of the evidence was so strong that a verdict ought not to be permitted to stand which should find that the use referred to in the conversation between the parties was other than in the business in which the defendant was engaged.

It, therefore, follows that the defendant has never made ■ any use of the invention of the plaintiff in accordance with the conversation had by the parties in respect to the same. It appears in the evidence that the defendant never made any use of the plaintiff’s invention in and about his business. That it was totally impracticable and valueless, and that it never advantaged him according to the testimony.

It has long been settled that where a valueless invention is the subject of sale, by way of defense it may be shown that the supposed invention had no value or usefulness. Saxton v. Dodge, 57 Barb., 115.

We think it was competent for the defendant to show upon this trial that he was the originator of the idea claimed by the plaintiff to have been his invention. Dickinson v. Hall, 14 Pick., 217.

It was held to be competent in defense of a promise to pay by the purchaser of a patent right that the invention was neither a new nor a useful invention. See also Head v. Stevens (19 Wend., 411).

Third. We are also of the opinion that the alleged contract was void by the statute of frauds. It was for the sale of property in a stipulated amount exceeding fifty dollars, and was not in writing. The thing contemplated by the contract was the invention. There was no such delivery and acceptance as satisfies the requirements of the statute of frauds. Neither was there any part payment for the thing sold.

Plaintiff’s learned counsel calls our attention to Marsh v. Rouse (44 N. Y., 643), wherein it is decided that “ to constitute a sufficient delivery under an oral agreement for the sale of personal property to take the contract out of the statute of frauds, the property must be placed within the control and under the exclusive dominion of the buyer. ”

There was no such delivery of the invention as excluded the plaintiff from applying to the patent office for letters-patent. Therefore, if he had applied and obtained letters-patent, and an assignment had been made and recorded of any rights derived by him under the letters-patent, the assignee would have acquired title by a record of such assignment, which would have defeated any parol arrangement had between the defendant and the plaintiff. Section 4898, United States Revised Statutes.

We think receiving the model from the plaintiff and attaching a catch-spring thereto, and returning the property to the defendant, was not such, a delivery as is required to take the case out of the statute of frauds.

If the sale was made by the plaintiff to the defendant, it was of the invention, the inventor’s device, which was the principal thing or property sold. The improved model was a mere incident used or usable to illustrate the idea, the invention or the device. If the plaintiff had any proprietory interest in such idea, the invention or device as he claims to have sold to the defendant, or as his counsel calls it, “of an unpatented invention,” that was the subject matter of the alleged sale.

The foregoing views lead us to the conclusion that the learned trial judge committed no error in ordering a judgmedt of nonsuit at the circuit.

Judgment affirmed with costs.

Boardman, J., concurs in result; Follett, J., dissents with an opinion.

Follett, J.

(dissenting.)—In January, 1884, the plaintiff invented and applied to a shoe last a mechanical devise which the plaintiff and defendant believed tobe an improvement, the right to which the defendant purchased m January, 1884, by an oral contract. The terms of this contract are in dispute. The plaintiff testified on the trial that defendant agreed to pay him $500 for the invention if he made any use of it. Defendant testified he agreed to pay $500 for the invention if he used it on all of his lasts, $250 if he used it on half of his lasts and nothing if not used on any of his lasts. May 19, 1885, defendant received letters patent for this invention upon an application in which he swore that he was the inventor of the device.

The foregoing facts are undisputed. An unpatented invention, not abandoned, is the individual property of the inventor, and is assignable. Gayler v. Wilder, 10 How., 477; Hendrie v. Sayles, 98 U. S., 546; Palmer v. De Witt, 47 N. Y., 532.

It is urged that a recovery cannot be had on this oral contract of sale because the defendant did not “accept and receive ” the thing sold, or, ‘ ‘ at the time pay some part of the purchase money ” as required by the third section of the second title of the statute of frauds. No part of the purchase money was paid at the time of the sale, and the question arises whether the defendant accepted and received the thing sold so as to take the contract out of the statute referred to.

The plaintiff’s invention was materialized and delivered by him to the defendant who accepted it and subsequently obtained a patent upon it, claiming it to be his own invention. Since the sale the defendant has exercised complete dominion over the invention to the exclusion of the plaintiff and all others. He cannot now be heard to say, his acceptance and receipt, were imperfect because it is within the plaintiff’s power, by suit, to annul the letters patent for the false statement in defendant’s application upon which the letters were issued.

If an author of an uncopyrighted work should sell it and deliver a manuscript copy to a publisher who should publish it without copyrighting, or should' copyright and not publish it, I think the purchaser could not successfully defend an action brought to recover the purchase price, upon the ground that his acceptance and receipt were insufficient to take the case out of the statute cited. In the case at bar the thing sold did not admit of a more perfect delivery by the plaintiff, or of a more complete acceptance and receipt by the defendant, and I think sufficient was done to take the ' case out of the statute. Marsh v. Rouse, 44 N. Y., 643; Reed St. Fr., § 261, 1 Benjamin sales (Corbin’s ed), 167, 195. Section 4898 of the Revised Statutes of the United States, requiring assignments of patents, or interest in patents, to be in writing, is not applicable to this case. This was not the sale of a patent, or of an interest in a patent, but of an invention, which was as much the plaintiff’s property as is the production of an author, and the inventor may sell his invention without reference to the patent laws, or the author his work without reference to the copyright laws.

When the invention has been patented, or the production copyrighted, sales of interests under the patent or under the copyright must be made in accordance with the statutes relating to those subjects. Burr v. De La Virgne, 102 N. Y., 415, is decisive of this question.

Should the jury find the contract to be as testified to by the plaintiff, it cannot (as the evidence now stands) be affirmed as a question of law, that it was the intention of the parties that defendant should not j)ay anything for this invention unless he used it upon his lasts and in his business.

It has been held in actions brought to recover the price agreed to be paid for patents that the invalidity of the patents may be proved as a defense.

The defense that a patent is worthless because invalid is -quite different from the defense that a patent is worthless because impracticable.

Whether the cases holding that the invalidity of a patent may be proved in defense of an action for the purchase price rests upon the doctrine of implied warranty of title, •or upon some other grounds (2 Benjamin Sales [Corbin ed.], 834, 835), and need not be considered, for the question is not in this case.

This case does not arise over the sale of a patent, or of an interest in a patent. Plaintiff did not profess to sell a patent, or an interest in a patent, but an invention. If the patent is invalid it is because the defendant obtained it in violation of section 4895 of the Revised Statutes of the United States, and swore in his application that he, and not the plaintiff, was the original inventor. He cannot take .advantage of his own wrong.

The judgment should be reversed, á new trial granted, with costs to abide the event.  