## Facts

- Why Corporation sued Super Ironer Corporation for infringement of U.S. Patent No. 1,624,698 (ironing machine).
- Super Ironer did not contest validity or that its machines practiced the invention, but defended on the ground that it owned the patent and Why lacked title to sue.
- On October 24, 1927, the patentee assigned the patent to his father, Timothy J. Watts; that 1927 assignment was not recorded until July 6, 1937.
- On November 1, 1928, Watts executed a duly acknowledged assignment of the patent to Watts Laundry Machinery Company, a corporation of which Watts was president and controlling stockholder; the 1928 assignment was not recorded.
- On April 10, 1929, Watts Laundry Machinery Company executed a reassignment of the patent back to Watts; the instrument was acknowledged but was not recorded.
- The reassignment was signed by Watts as president and by his daughter as secretary, and it was executed without authorization by the corporation’s directors.
- Evidence in the record showed serious disputes over corporate control and assets, including creditors’ intervention through arrangements that limited Watts’s control; the patent was treated as a significant corporate asset in those events.
- In April 1931, Watts Laundry Machinery Company sold/assigned the patent to Super Ironer Corporation for valuable consideration; the instrument recited that the patent certificate had been mislaid.
- Super Ironer recorded its 1931 assignment in June 1938.
- In September 1938, Watts purported to assign his rights in the patent to Harry Koplin; in February 1939, Harry Koplin assigned to David Koplin; in December 1939, David Koplin assigned to Why Corporation; these three later assignments were recorded.
- The district court accepted Super Ironer’s ownership defense and dismissed Why’s infringement suit on the merits; it also found laches, but dismissal rested on title.
- Why appealed, challenging the determination that Super Ironer held legal title.

## Issues

1. Whether Super Ironer obtained superior legal title to the patent under the federal patent-assignment recording statute (R.S. § 4898, then 35 U.S.C.A. § 47) as a purchaser for value without notice who recorded, defeating Why’s later-recorded chain.
2. Whether the 1929 reassignment from Watts Laundry Machinery Company to Watts—executed without board approval and by a self-interested officer—effectively transferred the patent out of the corporation so that Watts could later convey valid title to Why’s predecessors.
3. If Super Ironer held legal title before the later assignments to Why’s chain, whether any laches ruling mattered to the appellate result.

## Decision

- The Sixth Circuit affirmed the judgment dismissing Why Corporation’s infringement action.
- The court held that Watts Laundry Machinery Company, not Watts individually, owned the patent when it sold to Super Ironer in April 1931, because the 1929 reassignment to Watts was not a valid corporate act.
- Applying the patent-assignment recording statute, the court held that Super Ironer’s purchase for value without notice, followed by recordation, gave it legal title superior to later claimants under Watts.
- Because Why Corporation did not have title, it lacked standing to maintain an infringement action, and the laches discussion did not affect the outcome.

## Legal Principles

- A patent infringement plaintiff must own the patent rights it seeks to enforce; lack of title defeats the action.
- Under R.S. § 4898 (then 35 U.S.C.A. § 47), an unrecorded patent assignment can be void as against a later purchaser or mortgagee for valuable consideration without notice who records its interest as required by the statute.
- Recordation does not validate a conveyance made by an entity or agent lacking authority; courts look to the reality of ownership and corporate authority when determining who could transfer title.
- A corporate officer’s attempt to transfer a major corporate asset to himself, without proper corporate authorization, is not treated as an effective divestiture of corporate ownership in later title disputes.

## Conclusion

The Sixth Circuit concluded that Watts Laundry Machinery Company retained ownership of the patent despite the unrecorded, unauthorized 1929 reassignment to Watts, and that the corporation’s 1931 sale to Super Ironer conveyed superior legal title under the patent-assignment recording statute; as a result, the later recorded assignments through Watts to Why Corporation transferred no enforceable ownership interest, so Why could not sue Super Ironer for infringement.


Why Corp. v. Super Ironer Corp., 128 F.2d 539, 53 U.S.P.Q. 609 (1942)