
    Hartwig Herzog et al., Respondents, v. Nathan H. Heyman, Impleaded, Appellant.
    (New York Superior Court— General Term,
    April, 1894.)
    Invalidity of a patent is available in a state court as a defense to an action for the purchase price on the ground of a failure of consideration.
    An agreement to pay royalties does not make the assignee of the patent a licensee where the royalties to be paid are part of the purchase price. Such invalidity cannot, however, be made the ground of a counterclaim for damages.
    Appeal from judgment of Special Term, entered upon an order sustaining plaintiffs’ demurrer to the second and third defenses and counterclaims of the answer.
    
      Action to recover royalties upon a contract of assignment of a patent. Such contract provided that the assignment should be paid for by royalties.
    The defenses demurred to set up the recovery of a judgment recovered in Pennsylvania in an action for infringement brought by the owners of another patent against parties to whom the defendant had sold a machine manufactured under the patent in . question, set up the invalidity of the patent assigned to the defendants and claimed damages to the amount of $25,000.
    
      Henry D. Williams, for appellant.
    
      Abraham I. Jacobs, for respondents.
   Dugro, J.

The learned trial judge was right in holding that the plaintiffs were not concluded by the result in the Pennsylvania suit. They were not parties and do not appear to have had notice of it.

The complaint states a cause of action for royalties due upon a contract of sale. The answer sets forth, among other defenses, that of the invalidity of the patent sold and a consequent failure of consideration. In such a case an inquiry as to the validity of the patent can he made in a state court, as it is' merely incidental to the main question, which is, valid contract or void contract.

It seems to be the settled law of this state that the invalidity of a patent is available as a defense m an action for the purchase price on the ground of a failure of consideration, but not in an action by a licensor to recover royalties. See Marston v. Swett, 66 N. Y 212; Rob. Patents, §§ 1230, 1239. This action is brought against a purchaser for the purchase price. The agreement to pay royalties did not make the assignee a licensee, as the royalties to he paid were part of the purchase price. Littlefield v. Perry, 21 Wall. 205. The validity of the contract could, therefore, be brought in question.

As the defendant set forth that the patent was wholly incapable of use and worthless, it was unnecessary to allege a return of or an offer to return the patent. The contract contains no express warranty and none can be implied. Rob. Patents, § 1232; Walker Patents, § 283. Hence, if there is a failure of consideration, so far as the patent is concerned, there can be no counterclaim.

It follows that the matter set forth in the seventh paragraph of the answer is sufficient in law as a defense, but not as a counterclaim. The judgment modified accordingly will be affirmed, with costs to neither party in either court.

There can be no breach of a void contract^ and so no damage from a breach.

Sedgwick, Ch. J., and Gildersleeve, J., concur.

Judgment modified in accordance with opinion, and as modified affirmed, without costs.  