CERTIORARI TO THE SUPREME COURT OF WASHINGTON.
Warren, Black, Douglas, Clark, Harlan, Brennan, Stewart, White, Goldberg
MR. JUSTICE DOUGLAS delivered the opinion of the Court.
Respondent, owner of various patents for hop-picking, sold a machine to each of the petitioners for a flat sum*fn1 and issued a license for its use. Under that license there is payable a minimum royalty of $500 for each hop-picking season or $3.33 1/3 per 200 pounds of dried hops harvested by the machine, whichever is greater. The licenses by their terms may not be assigned nor may the machines be removed from Yakima County.
The licenses issued to petitioners listed 12 patents relating to hop-picking machines;*fn2 but only seven were incorporated into the machines sold to and licensed for use by petitioners. Of those seven all expired on or before 1957. But the licenses issued by respondent to them*fn3 continued for terms beyond that date.
Petitioners refused to make royalty payments accruing both before and after the expiration of the patents. This suit followed. One defense was misuse of the patents through extension of the license agreements beyond the expiration date of the patents. The trial court rendered judgment for respondent and the Supreme Court of Washington affirmed. 62 Wash. 2d 284, 382 P. 2d 271. The case is here on a writ of certiorari. 376 U.S. 905.
We conclude that the judgment below must be reversed insofar as it allows royalties to be collected which accrued after the last of the patents incorporated into the machines had expired.
The Constitution by Art. I, § 8 authorizes Congress to secure "for limited times" to inventors "the exclusive right" to their discoveries. Congress exercised that power by 35 U. S. C. § 154 which provides in part as follows:
"Every patent shall contain a short title of the invention and a grant to the patentee, his heirs or assigns, for the term of seventeen years, of the right to exclude others from making, using, or selling the invention throughout the United States, referring to the specification for the particulars thereof. . . ."
The right to make, the right to sell, and the right to use "may be granted or conferred separately by the patentee." Adams v. Burke, 17 Wall. 453, 456. But these rights become public property once the 17-year period expires. See Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 185; Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118. As stated by Chief Justice Stone, speaking for the Court in Scott Paper Co. v. Marcalus Co., 326 U.S. 249, 256:
". . . any attempted reservation or continuation in the patentee or those claiming under him of the patent monopoly, after the patent expires, whatever the legal device employed, runs counter to the policy and purpose of the patent laws."
The Supreme Court of Washington held that in the present case the period during which royalties were required was only "a reasonable amount of time over which to spread the payments for the use of the patent." 62 Wash. 2d, at 291, 382 P. 2d, at 275. But there is intrinsic evidence that the agreements were not designed with that limited view. As we have seen,*fn4 the purchase price in each case was a flat sum, the annual payments not being part of the purchase price but royalties for use of the machine during that year. The royalty payments due for the post-expiration period are by their terms for use during that period, and are not deferred payments for use during the pre-expiration period. Nor is the case like the hypothetical ones put to us where non-patented articles are marketed at prices based on use. The machines in issue ...