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IN THE COURT OF KING'S BENCH.

Hayne and another, against Maltby.

17 Nov. 1789.

THIS was an action of covenant on articles of agreement, which recited that the plaintiffs were assignees of T. Taylor, of a patent for an engine or machine to be fixed to a common stocking frame, for making a sort of net or open work, called point net; and that the defendant had applied to the plaintiffs for their permission to use a stocking frame to one of their patent machines, to which they had consented, on condition of his working it in the manner described in the specification; and then stated a covenant by the plaintiffs with the defendant, that he should, during the remainder of the term of the letters patent, freely use and employ one stocking frame, with their patent engine or machine thereto, in case the same should be worked only in the manner described by the specification, without any interruption by them; and also a covenant by the defendant, that he would not, during the residue of the term of the letters patent, use or employ any of the patent engines, or any engines resembling the same, except the stocking frame and machine in the articles allowed to be employed by him. The declaration then averred enjoyment by the defendant without any interruption from the

plaintiffs; and then assigned two breaches; one for using and employing patent engines or machines, other than and besides that by the agreement allowed to be employed by him; the other for using engines or machines resembling the patent machines.

To this there were several pleas; the three last of which only are material here. The third plea set forth the letters patent, which stated a petition by the patentee, calling himself the inventor of the machine, and contained the usual proviso, that they should be void, if the patentee did not enrol a specification of his invention in Chancery in four months; and then averred, that the patentee did not enrol such specification.

The defendant, in his fourth plea, said, that the invention mentioned in the patent was not a new invention; and in the fifth, that the invention was not discovered by Taylor, the patentee.

The plaintiffs demurred to the 3d, 4th, and 5th pleas; because the defendant attempted to put in issue matters foreign to the merits of the cause, inasmuch as he was estopped by his deed from putting those matters in issue here.

Mr. Wigley, in support of the demurrer, contended, that the defendant was estopped by his deed to say that this was not a new invention, or that it was not discovered by the patentee. Wherever a party has entered into a specialty, he cannot afterwards be permitted to say that he received no consideration for it, though he may plead that the consideration was illegal. In Oldham v. Langmead, tried before Lord Kenyon, at

the sittings after Trinity Term, 1789, where the action was brought by the assignee of the patentee against the patentee, his Lordship would not permit the latter to shew that it was not a new invention against his own deed. If, in point of fact, this were not a new invention, the defendant should have repealed the letters patent by scire facias, and then applied to the Court of Chancery to have had the deed delivered up to be cancelled. But by his deed he has admitted that the plaintiffs had a title; and, as long as the term mentioned in it exists, he is estopped from denying it; in the same manner that a tenant, who holds under a demise from his landlord is, in answer to an action for rent.

Mr. Chambre, on the other side, argued that the defendant is not estopped by his deed to shew that he has entered into this covenant, not only on an illegal consideration, but also without any consideration. A person cannot indeed aver against a record, though he may against the operation of it. Here then, as the deed recites that the plaintiffs were in possession of a patent, the defendant is perhaps estopped to deny it; but it cannot estop him from denying the operation of it. In this indenture, the plaintiffs do not assign the patent to the defendant; they only covenant that the defendant may use the engine in a certain manner, which he might have done without the covenant. For on this record it must be taken that the invention was not new; and then this is a covenant without consideration, or entered into for an illegal consideration; because it operates

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in restraint of trade. In Mitchell v. Reynolds, 1. P. Williams, 181. it was held that a covenant in restraint of trade in a particular place, if without consideration, or in restraint of trade generally was void. And this also answers the argument of estoppel; for no deed of this sort can operate by way of estoppel, as it is against public policy. Neither could it be necessary for the defendant to sue out a scire facias to repeal the patent, before he disputed its validity; because in all actions brought by a patentee for infringing the patent, it is incumbent on him to make out his right.

Mr. Wigley, in reply, contended that this is not a void consideration: but, if it were, it will not avoid a deed in a court of law. With respect to this being in restraint of trade; though a covenant not to set up a trade generally be bad, yet the party may covenant not to set up a trade in a particular place; and the covenant in this instance is similar to the latter; for it is a covenant not to use a particular machine. Even admitting this patent to be void, this is not so hard a case as that of a tenant who may be compelled to pay rent to a person having a title paramount his landlord's, and who is nevertheless estopped to impeach his landlord's title in an action for the

same rent.

Lord Chief Justice KENYON.-The facts of this case are shortly these: the plaintiffs, pretending to derive a right under a patent, assigned to the defendant part of that right, on certain terms; and, notwithstanding the facts now disclosed shew that they have no such privilege, they still insist

that the defendant shall be bound by his covenant, though the consideration of it is fraudulent and void. This is not to be considered as a covenant to pay a certain sum in gross, at all events; but to use a machine in a particular way, in consideration of the plaintiffs having conferred that interest on the defendant, which they professed to confer by the agreement. Now in point of conscience, it is impossible that two persons can entertain different ideas upon the subject. But it is said, that though conscience fails, the defendant is estopped in point of law from saying that the plaintiffs had no privilege to confer. But the doctrine of estoppel is not applicable here. Where indeed an heir apparent, having only the hope of succession, conveys, during the life of his ancestor, an estate, which afterwards descends upon him: although nothing passes at that time, yet when the inheritance descends upon him, he is estopped to say that he had no interest at the time of the grant. There an estoppel is founded on law, conscience, and justice; but what is the case here? Who is estopped? The person supposed to be estopped is the very person who has been cheated and imposed upon. In the case Oldham v. Langmead, the patentee had conveyed his interest in the patent to the plaintiff; and yet, in violation of his contract, he afterwards infringed the plaintiff's right, and then attempted to deny his having had any title to convey. But I was of opinion that he was estopped by his own deed from making that defence. But there is no similarity between that and the present case.