Gayler v. Wilder
10 How. 477, 51 U.S. 477, 13 L. Ed. 504 (1851)
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Rule of Law:
An inventor may assign their inchoate right to an invention before a patent is issued, and such an assignment will transfer legal title upon the patent's issuance. A patent granted to a subsequent, independent inventor is not invalidated by a prior invention that was used privately and then forgotten or abandoned, as the subsequent inventor is treated as the discoverer of a lost art who first brings the benefit of the invention to the public.
Facts:
- Between 1829 and 1832, James Conner constructed a fire-proof safe with a double chest filled with plaster of Paris for his own private use in his stereotype foundry.
- Conner used the safe in his counting-room, where it was known to his employees, until 1838.
- In 1838, the safe passed out of Conner's hands into the possession of another person, and its subsequent use or construction details were not known.
- On April 11, 1839, Daniel Fitzgerald, having invented a substantially similar fire-proof safe, assigned his interest in the not-yet-patented invention to Enos Wilder.
- In 1843, a patent for the 'Salamander' safe was officially issued to Daniel Fitzgerald.
- Enos Wilder later assigned his interest to Benjamin G. Wilder, the plaintiff.
- Wilder granted a right to a man named Herring to make and sell the safes in New York, but Wilder reserved for himself the right to manufacture and sell them in the same territory under certain conditions.
- Gayler and others began manufacturing and selling safes that were substantially the same as the one patented by Fitzgerald, leading to an infringement claim.
Procedural Posture:
- Benjamin G. Wilder filed suit against Gayler and others for patent infringement in the Circuit Court of the United States for the Southern District of New York, a federal trial court.
- The case was tried before a jury, which returned a verdict in favor of the plaintiff, Wilder.
- The defendants, Gayler et al., as plaintiffs in error, appealed the judgment to the Supreme Court of the United States, challenging the instructions the trial judge gave to the jury.
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Issue:
Does a prior invention that was used only for private purposes and then forgotten or abandoned by its creator invalidate a patent later granted to a subsequent, independent inventor for the same discovery?
Opinions:
Majority - Mr. Chief Justice Taney
No. A prior invention that was used privately and then forgotten or abandoned does not invalidate a patent later granted to a subsequent, independent inventor. The Patent Act's purpose is to reward those who confer a benefit upon the public, and an inventor who discovers what was unknown and communicates knowledge the public did not possess is regarded as the first inventor. The court reasoned that if Conner's invention was lost to the public memory, the public derived no benefit from it. Fitzgerald, by independently inventing the safe and securing a patent, was the first to make the benefit of the invention accessible to the public. He is therefore treated like the discoverer of a 'lost art' and is entitled to the patent. The court also held that an inventor's inchoate right to an invention is assignable before a patent is issued, and legal title vests in the assignee upon the patent's grant. Finally, the agreement with Herring was deemed a mere license, not an assignment, because it did not convey the entire and unqualified monopoly within the territory, thus Wilder retained the legal right to sue for infringement.
Dissenting - Mr. Justice McLean
Yes. A prior invention, whether made public or not, invalidates a later patent because the patentee is not the 'original and first inventor' as required by the plain language of the Patent Act. The statute is clear that a patent is void if the invention was 'known or used by others' before the patentee's discovery. Conner's safe was known and used by him and his employees years before Fitzgerald's invention, which is fatal to the patent's validity. The majority's introduction of a 'forgotten or abandoned' standard is a novel and erroneous interpretation that is not supported by the statute and creates uncertainty in patent law. The priority of invention is the only relevant test, and matters such as private use or lack of experimentation are irrelevant.
Dissenting - Mr. Justice Daniel
Yes. A prior invention invalidates a subsequent patent, and furthermore, the plaintiff lacks legal title to sue. An invention before a patent is granted is a 'mere mental process' and not legal property that can be assigned at law; at most, a pre-patent assignment creates an equitable interest. Because the patent was issued to Fitzgerald and never legally assigned after its issuance, Wilder does not hold the legal title necessary to maintain an infringement action at law. Separately, the majority's instruction on a 'forgotten or abandoned' invention is vague and contradicts the express language of all patent statutes, which uniformly require originality and priority as the foundation of patent rights. An abandoned invention enters the public domain for all to use, it does not become the exclusive property of a subsequent inventor.
Analysis:
This case establishes the significant 'lost art' or 'forgotten invention' doctrine in U.S. patent law, creating a judicial exception to the statutory requirement that a patentee be the absolute first inventor. The decision prioritizes the public policy goal of incentivizing inventors who actually disclose a useful discovery to the public over a strict, literal interpretation of the Patent Act. This ruling protects subsequent, good-faith inventors from having their patents invalidated by obscure, secret, or abandoned prior uses that provided no public benefit. It also solidified the commercial practice of assigning rights to inventions before a patent is formally granted.
