U.S. Supreme Court
Mitchell v. Hawley, 83 U.S. 16 Wall. 544 544 (1872)
Mitchell v. Hawley
83 U.S. (16 Wall.) 544
A patentee of certain machines, whose original patent had still between six and seven years to run, conveyed to another person the "right to make and use and to license to others the right to make and use four of the machines" in two states
"during the remainder of the original term of the letters patent, provided that the said grantee shall not in any way or form dispose of, sell, or grant any license to use the said machines beyond the said term."
The patent having, towards the expiration of the original term, been extended for seven years, held that an injunction by a grantee of the extended term would lay to restrain the use of the four machines, they being in use after the term of the original patent had expired. chanrobles.com-red
The 18th section of the Patent Act of July 4, 1836, [Footnote 1] after enacting that patents may in certain cases be extended, and that "thereupon the said patent shall have the same effect in law as though it had been originally granted for the term of twenty-one years," adds:
"And the benefit of such renewal shall extend to assignees and grantees of the right to use the thing patented to the extent of their respective interests therein."
With this statutory enactment in force the United States, on the 3d of May, 1853, granted a patent to one Taylor for fourteen years for improved machinery in felting hats, the patent lasting, of course, till May 3, 1867.
While the patent was in force, that is to say on the 19th of November, 1860, Taylor, by deed reciting that one Bayley was
"desirous of obtaining the exclusive right to make and use, and license to others the right to use the said machines in the states of Massachusetts and New Hampshire,"
"conveyed to the said Bayley" certain rights, as follows:
"The exclusive right to make and use, and to license to others the right to use the said machines in the said states of Massachusetts and New Hampshire, and in no other place or places, during the remainder of the original term of said letters patent. Provided, that the said Bayley shall not in any way or form dispose of, sell, or grant any license to use the said machines beyond the 3d day of May, A.D. 1867."
"Should the said letters patent be extended beyond the 3d of May, A.D. 1867, then it is agreed that the said Bayley shall have the right to control the same in the said states of Massachusetts and New Hampshire, provided that he shall pay to the said grantor or his heirs or assigns, a fair and reasonable compensation for the same, or on terms as favorable as may be offered by any other person or party. "
In possession of this license Bayley, on the 18th of March, 1864, in consideration of $1,200, licensed one Mitchell and others of the town of Haverhill, Massachusetts, to run and use two sets (four machines) for felting hats, in said town of Haverhill, under Taylor's patent bearing date May 3, A.D. 1864.
Before the patent expired (May 3d, 1867) the Commissioner of Patents renewed and extended it for the further term of seven years; and one Hawley, having become the owner of this extended term for the states of Massachusetts and New Hampshire, filed a bill against Mitchell and the others to restrain them from using the four machines which Bayley on the 18th of March, 1864, had give them license to use, it being admitted that the said Mitchell et al. were now using those identical machines.
The court below granted the injunction, and the defendants took this appeal.