Wyeth v. Stone
30 F.Cas. 723, 1 Story 273 (1840)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
Under the Patent Act of 1793, an assignee of a patent must record the assignment in the office of the Secretary of State before they can stand in the place of the original inventor to maintain a suit for infringement. Separately, a patent claim for an abstract principle or art, rather than for a specific machine or method, is void and unmaintainable.
Facts:
- In 1829, Nathaniel J. Wyeth obtained a patent for a 'new and useful improvement in the manner of cutting ice,' which described a novel ice-cutting machine.
- Wyeth’s patent specification claimed both the particular machinery and, more broadly, 'the art of cutting ice... by means of an apparatus worked by any other power than human.'
- In February 1832, Wyeth assigned an interest in the patent to Frederic Tudor.
- The assignment from Wyeth to Tudor was never recorded in the office of the Secretary of State.
- For approximately ten years after the patent was granted, Wyeth was aware of and did not object to the defendants and others using a similar ice-cutting machine.
- The machine used by the defendants was substantially the same as Wyeth's patented cutter, incorporating a series of chisels on a single plane.
Procedural Posture:
- Nathaniel J. Wyeth (inventor) and Frederic Tudor (assignee) filed a bill in equity in the Circuit Court of the United States for the District of Massachusetts.
- The plaintiffs sought an injunction to prevent the defendants from infringing Wyeth's 1829 patent for an ice-cutting machine.
- The plaintiffs' bill admitted that the 1832 assignment of the patent from Wyeth to Tudor had never been recorded.
- During the litigation, after the suit was filed, Wyeth filed a disclaimer with the patent office to narrow the patent's overly broad claim to an abstract principle.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does an assignee of a patent have standing to sue for infringement if the assignment of the patent has not been recorded in the office of the Secretary of State as required by the Patent Act of 1793?
Opinions:
Majority - Justice Story
No. An assignee of a patent does not have standing to sue for infringement if the assignment has not been recorded as required by statute. The Patent Act of 1793 provides that an assignee, 'having recorded the said assignment... shall thereafter stand in the place of the original inventor, both as to right and responsibility.' The court interpreted this language to mean that recording the assignment is a mandatory prerequisite for an assignee to be substituted to the rights of the patentee, including the right to bring suit for infringement. Because the plaintiffs' own bill admitted that the assignment to Tudor was never recorded, Tudor had a defective title and lacked standing to be a plaintiff. The court deemed this defect, apparent on the face of the bill, to be fatal and required the suit to be dismissed. In extensive dicta, the court also found that Wyeth's claim to the abstract 'art' of cutting ice was void, but that such a defect could potentially be cured under the Act of 1837 by filing a disclaimer. The court also noted that the defendants had a very strong, though unpleaded, defense of acquiescence, as Wyeth had knowingly allowed public use of his invention for nearly a decade without objection.
Analysis:
This case establishes the critical importance of statutory formalities in patent law, holding that an unrecorded assignment deprives an assignee of standing to sue for infringement. While the case was decided on this procedural ground, Justice Story's influential dicta reinforced several foundational patent law doctrines. The opinion affirmed the core principle that abstract ideas or principles of nature are not patentable, clarified that multiple related machines serving a common purpose can be joined in a single patent, and articulated the equitable defense of acquiescence, where a patentee's prolonged inaction in the face of known infringement can bar a request for an injunction.
