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Gayler v. Wilder, 51 U.S. 477, 10 How. 477, 1850 WL 6915, 13 L.Ed. 504

Facts

Daniel Fitzgerald, the original inventor of a fire-proof safe, assigned his rights to Enos Wilder before the patent was issued. Fitzgerald's patent was granted on June 1, 1843, and he later sold his rights to the plaintiff. The defendants, Gayler and Brown, were accused of infringing on Fitzgerald's patent. The case revolved around whether the assignment to Wilder was sufficient to allow him to sue for infringement, and whether Fitzgerald was the original inventor.

It was also averred in the declaration, that before the date of said letters patent, to wit, on the 7th day of April, 1839, the said Daniel Fitzgerald made an assignment, which was duly recorded in the Patent-Office of the United States, on the 1st day of June, 1839.

Issue

Whether the assignment of patent rights from Fitzgerald to Wilder was sufficient to allow Wilder to sue for patent infringement.

Whether the assignment of patent rights from Fitzgerald to Wilder was sufficient to allow Wilder to sue for patent infringement.

Rule

An assignment of patent rights must convey the entire and unqualified monopoly of the patent to the assignee for the assignee to have the right to sue in their own name. If the assignment is not complete, it is treated as a mere license, which does not confer the right to sue.

To enable assignee of patentee to sue for infringement, assignment must convey to assignee entire and unqualified monopoly which patentee held in territory specified excluding the patentee himself as well as others.

Analysis

The court analyzed the assignment made by Fitzgerald to Wilder, determining that it did not convey the full and exclusive rights necessary for Wilder to sue. The court emphasized that the assignment must exclude the assignor from exercising any rights in the specified territory. Since the assignment allowed Fitzgerald to retain certain rights, it was deemed a license rather than a full assignment.

The court decided that said instrument operated to convey the interest in said patent to said Enos Wilder, so that, during his life, he could have maintained an action at law on the same; to which opinion of said court the counsel for the defendants then and there excepted.

Conclusion

The court concluded that the assignment did not grant Wilder the right to sue for infringement, as it was not a complete transfer of rights.

The court ruled that the assignment did not convey the legal title of said patent to the said Enos Wilder, and that, upon such conveyance, he could not have brought a suit on the same.

Who won?

The defendants, Gayler and Brown, prevailed in this case because the court found that the assignment from Fitzgerald to Wilder did not constitute a full transfer of patent rights. The court ruled that Wilder could not maintain an action for infringement since he did not hold the complete rights to the patent, which were still partially retained by Fitzgerald.

The defendants, Gayler and Brown, prevailed because the court found that the assignment from Fitzgerald to Wilder did not constitute a full transfer of patent rights, thus preventing Wilder from maintaining an action for infringement.

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