U.S. Supreme Court
Moore v. Marsh, 74 U.S. 7 Wall. 515 515 (1868)
Moore v. Marsh
74 U.S. (7 Wall.) 515
Under the fourteenth section of the Patent Act of 1836, enacting that damages may be recovered by action on the case, to be brought in the name of the person "interested," the original owner of the patent, who has afterwards sold his right, may recover for an infringement committed during the time that he was owner. The word "interested," means interested in the patent at the time when the infringement was committed.
The eleventh section of the Patent Act of 1836, relating to the assignment of patents, thus enacts:
"Every patent shall be assignable in law either as to the whole interest, or any undivided part thereof, by any instrument in writing, which assignment, and also every grant and conveyance of the exclusive right under any patent to make
and use, and to grant to others to make and use the thing patented, within and throughout any specified part of portion of the United States, shall be recorded,"
And the fourteenth section, which relates to damages in suits, brought by the owners of patents for infringement, says:
"And such damages may be recovered by action on the case, in any court of competent jurisdiction, to be brought in the name or names of the person or persons interested, whether as patentees, assignees, or as grantees of the exclusive right within and throughout a specified part of the United States."
This statute being in force, Moore a patentee, brought suit in the court below against Marsh for infringement. Marsh pleaded that after the date of the alleged infringement, he, Moore, the patentee, had sold and assigned an undivided half of the patent for the district where the infringement was alleged to have been committed. To this plea Moore demurred. The court having sustained the demurrer and judgment being given accordingly, the case was brought here by the patentee on appeal.
The general question, therefore, was whether a sale and assignment by a patentee of his patent right is, under the fourteenth section above quoted, a bar to an action by him to recover damages for an infringement committed before such sale and transfer. In other words, whether the words of the statute "name of the person interested" meant, as the plea assumed, "persons interested in the patent at the time when the suit was brought," or meant, as the declaration assumed, interested at the time when the cause of action accrued.
The case was submitted on briefs. chanroblesvirtualawlibrary