''Tyler v. Tuel''
10 U.S. (6 Cranch) 324 (1810)
was a

United States Supreme Court The Supreme Court of the United States (SCOTUS) is the highest court in the federal judiciary of the United States. It has ultimate appellate jurisdiction over all U.S. federal court cases, and over state court cases that involve a point o ...

case in which the Court held that an assignee of a geographically limited patent right could not bring an action in the assignee's own name. It was the first published Supreme Court decision on patent law. Like other Supreme Court patent cases prior to '' Evans v. Eaton''
16 U.S. (3 Wheat.) 454 (1818)
however, it did not deal with substantive patent law, but only with the law of

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Background

On February 20, 1800, the West Claremont, New Hampshire inventor Benjamin Tyler obtained a patent on a new type of tub wheel, or horizontal water wheel, that he termed the "wry fly". Tyler later became better known for his second patent on this basic concept, issued in 1804. Due to the later Patent Office fire, official records of these patents no longer survive. However, the invention was highly influential and anticipated many features of later turbines. Tyler assigned his right and interest in the 1800 patent to others for $6,000, but reserved to himself the right of use and sale within Chittenden,

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, and Windham counties in Vermont. Tyler's assignees brought suit against the defendant Tuel in the

District of Vermont The United States District Court for the District of Vermont (in case citations, D. Vt.) is the federal district court whose jurisdiction is the federal district of Vermont. The court has locations in Brattleboro, Burlington, and Rutland. The ...

for infringing the 1800 patent. They won at trial, but after the verdict was issued, Tuel filed a motion in arrest of judgment, arguing that the assignees never had legal standing to bring the suit, because they were not the assignees of the entire original right and interest in the patent. The district judges were divided on whether to grant the motion or not, and therefore the question went to the Supreme Court on a

certificate of division A certificate of division was a source of appellate jurisdiction from the circuit courts to the Supreme Court of the United States from 1802 to 1911. Created by the Judiciary Act of 1802, the certification procedure was available only where the c ...

Opinion of the Court

As was common in the patent jurisprudence of the time, the court applied principles of

property law Property law is the area of law that governs the various forms of ownership in real property (land) and personal property. Property refers to legally protected claims to resources, such as land and personal property, including intellectual pro ...

to the issue. Under section 4 of the

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, an assignee could bring suit against an infringer but a licensee could not.John F. Duffy, The Festo Decision and the Return of the Supreme Court to the Bar of Patents, 2002 Sup. Ct. Rev. 273, 288 n.51 (2002). Under the common law, an "assignment" only existed if the entire right and interest was assigned. The court's certified opinion therefore consisted of one sentence:

It is the opinion of the Court that the plaintiffs, by their own showing, are not legal assignees to maintain this action in their own names, and that the judgment of the circuit court be arrested.

Subsequent developments

''Tyler'' has been cited in fewer than a dozen cases since it was written. The ''Tyler'' rule was abrogated by the

Patent Act of 1836 The Patent Act of 1836 () established a number of important changes in the United States patent system. These include: *The examination of patent applications prior to issuing a patent. This was the second time this was done anywhere in the worl ...

. In consequence, ''Tyler'' has seldom been cited since the 1830s, except in historical reviews. In 1868, the Supreme Court noted ''Tyler''s obsolescence in ''Moore v. Marsh''
74 U.S. (7 Wall.) 515 (1868)
The 1836 act, however, only affected geographically divided interests. The Supreme Court therefore continued throughout the 19th century to hold that an assignment that was divided in any ''non''-geographical way was a license rather than an assignment and did not confer standing. Under the ''Tyler'' rule, an assignee of a geographical part interest could not bring suit in the assignee's own name.

Justice Story Joseph Story (September 18, 1779 – September 10, 1845) was an associate justice of the Supreme Court of the United States, serving from 1812 to 1845. He is most remembered for his opinions in ''Martin v. Hunter's Lessee'' and ''United States ...

clarified the ''Tyler'' rule in a district court opinion in ''Whittemore v. Cutter'', ruling that ''Tyler'' did not apply to the transferee of an undivided part interest.''Whittemore v. Cutter'', 29 F. Cas. 1120, 1120-21 (C.C.D. Mass. 1813).

References

{{USArticleI 1810 in United States case law Abrogated United States Supreme Court decisions United States Supreme Court cases United States Supreme Court cases of the Marshall Court United States Supreme Court patent case law Water wheels