Wilson v. Rousseau
45 U.S. 646 (1846)

Annotate this Case

U.S. Supreme Court

Wilson v. Rousseau, 45 U.S. 4 How. 646 646 (1846)

Wilson v. Rousseau

45 U.S. (4 How.) 646

Syllabus

The eighteenth section of the patent act of 1836 authorized the extension of a patent on the application of the executor or administrator of a deceased patentee.

Such an extension does not inure to the benefit of assignees under the original patent, but to the benefit of the administrator (when granted to an administrator), in his capacity as such. But those assignees who were in the use of the patented machine at the time of the renewal have still a right to use it.

The extension could be applied for and obtained by the administrator, although the original patentee had, in his lifetime, disposed of all his interest in the then existing patent. Such sale did not carry anything beyond the term of the original patent.

A covenant by the patentee, made prior to the law authorizing extensions, that the covenantee should have the benefit of any improvement in the machinery or alteration or renewal of the patent did not include the extension by an administrator under the act of 1836. It must be construed to include only renewals obtained upon the surrender of a patent on account of a defective specification. Parties to contracts look to established and general laws, and not to special acts of Congress.

A plaintiff, therefore, who claims under an assignment from the administrator can maintain a suit against a person who claims under the covenant.

An assignee of an exclusive right to use two machines within a particular district can maintain an action for an infringement of the patent within that district even against the patentee.

In the case of Woodworth's planing machine, the patent granted to the administrator was founded upon a sufficient specification and proper drawings, and is valid.

The decision of the Board of Commissioners, to whom the question of renewal is referred by the act of 1836, is not conclusive upon the question of their jurisdiction to act in a given case.

The Commissioner of Patents can lawfully receive a surrender of letters patent for a defective specification and issue new letters patent upon an amended specification, after the expiration of the term for which the original patent was granted and pending the existence of an extended term of seven years. Such surrender and renewal may be made at any time during such extended term.

This case and the three subsequent ones, namely Wilson v. Turner, Simpson v. Wilson, and Woodworth & Bunn v. Wilson, were argued together, being known as The Patent Cases. Many of the points of law involved were common to them all, and those which were fully argued in the first case which came up were but incidentally touched in the discussion of the subsequent cases.

Page 45 U. S. 647

They all related to the rights which were derived under a patent for a planing machine taken out by Woodworth and renewed and extended by his administrators. The validity of the original patent was questioned only in one case, namely that which came from Kentucky, which was the last argued. There were four cases in all, namely one from New York, one from Maryland, one from Louisiana, and one from Kentucky. In the course of the argument, counsel referred indiscriminately to the four records, as some documents were in one which were not to be found in another.

The cases will be taken up and reported seriatim, and the documents which are cited in the first will not be repeated in the others.

The first in order was the case from New York, the titling of which is given at the head of this report.

It came up from the Circuit Court of the United States for the Northern District of New York, on a certificate of division in opinion.

On 26 November, 1828, William Woodworth presented the following petition.

"To the Honorable Henry Clay, Secretary of State of the United States"

"The petition of William Woodworth, of the City of Hudson, in the County of Columbia and State of New York, respectfully represents: "

"That your petitioner has invented a new and improved method of planing, tonguing, grooving, and cutting into mouldings, or either, plank, boards, or any other material and for reducing the same to an equal width and thickness, and also for facing and dressing brick and cutting mouldings on, or facing, metallic, mineral, or other substances, not known or used before the application by him, the advantages of which he is desirous of securing to himself and his legal representatives. He therefore prays that letters patent of the United States may be issued granting unto your petitioner, his heirs, administrators, or assigns, the full and exclusive right of making, constructing, using, and vending to others to be used, his aforesaid new and improved method, agreeably to the acts of Congress in such case made and provided, your petitioner having paid thirty dollars into the Treasury of the United States, and complied with the other provisions of the said acts."

"WILLIAM WOODWORTH"

"November 26, 1828"

On 4 December, 1828, Woodworth executed to James Strong the following assignment.

"Whereas I, William Woodworth, of the City of Hudson in the State of New York, heretofore, to-wit, on 13

Page 45 U. S. 648

September, 1828, assigned and transferred, for a legal and valuable consideration, the one equal half of all my right, title, claim, and interest in and to the invention or improvement mentioned and intended in the foregoing petition, oath, and specification, to James Strong, of the City of Hudson."

"And whereas, also, the subjoined assignment is intended only to convey and assign the same interest transferred and assigned in the assignment of 13 September above mentioned, without any prejudice to my one equal half part of said invention or improvement, which is expressly reserved to myself and my legal representatives."

"Now know all men that I, the said William Woodworth, for and in consideration of the sum of ten dollars, and other valuable considerations me moving, have and do hereby, for myself and legal representatives, give, assign, transfer, and assure to the said James Strong and his legal representatives the one full and equal half of all my right, title, interest, and claim in and to my new and improved method of planing, tonguing, grooving, and cutting into mouldings, either plank, boards, or any other material, and for reducing the same to an equal width and thickness, and also for facing and dressing brick, and cutting mouldings on, or facing, metallic, mineral, or other substances, mentioned and intended to be secured by the foregoing petition, oath, and specification, together with all the privileges and immunities, as fully and absolutely as I do or shall enjoy or possess the same, to have and to hold and enjoy the same, to the said James Strong, and his legal representatives, do or may."

"In witness whereof, I have hereunto set my hand and seal, 4 December, 1828."

"WILLIAM WOODWORTH [SEAL]"

"Witnesses:"

"HENRY EVERTS"

"DAVID GLEASON"

On 6 December, 1828, Woodworth took the following oath.

"State of New York, Rensselaer County, ss.: "

"On this sixth day of December, A.D. 1828, before the subscriber, a justice of the peace in and for the County of Rensselaer aforesaid, personally appeared the aforesaid William Woodworth, and made solemn oath, according to law, that he verily believes himself to be the true and original inventor of the new and improved method, above described and specified, for planing, tonguing, grooving, and cutting into mouldings, or either, plank, boards, or any other material, and for reducing the same to an equal width and thickness; and also for facing and dressing brick,

Page 45 U. S. 649

and cutting mouldings on, or facing, metallic, mineral, or other substances, and that he is a citizen of the United States."

"JOHN THOMAS, Justice of the Peace"

The above documents appear to be recorded in the third volume of Transfers of Patent Rights, pages 155, 156, in the Patent Office of the United States.

On 27 December, 1828, a patent was issued as follows.

"Letters Patent to W. Woodworth"

"The United States of America to all to whom these letters patent shall come: "

"Whereas William Woodworth, a citizen of the United States, hath alleged that he has invented a new and useful improvement in the method of planing, tonguing, grooving, and cutting into mouldings, or either, plank, boards, or any other material, and for reducing the same to an equal width and thickness; and also for facing and dressing brick, and cutting mouldings on, or facing, metallic, mineral, or other substances, which improvements, he states, have not been known or used before his application; hath made oath that he does verily believe that he is the true inventor or discoverer of the said improvement; hath paid into the Treasury of the United States the sum of thirty dollars, delivered a receipt for the same, and presented a petition to the Secretary of State, signifying a desire of obtaining an exclusive property in the said improvements, and praying that a patent may be granted for that purpose. These are therefore to grant, according to law, to the said William Woodworth, his heirs, administrators, or assigns, for the term of fourteen years from 27 December, 1828, the full and exclusive right and liberty of making, constructing, using, and vending to others to be used, the said improvement, a description whereof is given in the words of the said William Woodworth himself, in the schedule hereto annexed, and is made a part of these presents."

"In testimony whereof, I have caused these letters to be made patent, and the seal of the United States to be hereunto affixed. Given under my hand, at the City of Washington, this 27 December, in the year of our Lord 1828, and of the independence of the United States of America the fifty-third."

"[Signed] J. Q. ADAMS"

"By the President"

"[Signed] H. CLAY, Secretary of State"

"Certificate of Wm. Wirt, Attorney General of the United States."

"City of Washington, to-wit: "

"I do hereby certify that the foregoing letters patent were delivered

Page 45 U. S. 650

to me on 27 December, in the year of our Lord 1828, to be examined; that I have examined the same and find them conformable to law, and I do hereby return the same to the Secretary of State within fifteen days from the date aforesaid, to-wit, on this 27 December in the year aforesaid."

"WM. WIRT"

"Attorney General of the United States"

"Schedule"

"The schedule referred to in these letters patent and making part of the same, containing a description, in the words of the said William Woodworth himself, of his improvement in the method of planing, tonguing, grooving, and cutting into mouldings, or either, plank, boards, or any other material, and for reducing the same to an equal width and thickness, and also for facing and dressing brick and cutting mouldings on, or facing, metallic, mineral, or other substances."

"The plank, boards, or other material, being reduced to a width by circular saws or friction wheels, as the case may be, is then placed on a carriage, resting on a platform, with a rotary cutting wheel in the center, either horizontal or vertical. The heads or circular plates, fixed to an axis, may have one of the heads movable, to accommodate any length of knife required. The knife fitted to the head with screws or bolts, or the knives or cutters for moulding fitted by screws or bolts to logs, connecting the heads of the cylinder, and forming with the edges of the knives or cutters a cylinder. The knives may be placed in a line with the axis of the cylinder or diagonally. The plank or other material resting on the carriage may be set so as to reduce it to any thickness required, and the carriage, moving by a rack and pinion, or rollers, or any lateral motion, to the edge of the knives or cutters on the periphery of the cylinder or wheel, reduces it to any given thickness. After passing the planing and reducing wheel, it then approaches, if required, two revolving cutter wheels, one for cutting the groove and the other for cutting the rabbets that form the tongue; one wheel is placed directly over the other, and the lateral motion moving the plank, or other material, between the grooving and rabbeting wheels, so that one edge has a groove cut the whole length, and the other edge a rabbet cut on each side, leaving a tongue to match the groove. The grooving wheel is a circular plate fixed on an axis, with a number of cutters attached to it to project beyond the periphery of the plate, so that when put in motion it will perform a deep cut or groove, parallel with the face of the plank or other material. The rabbeting wheel, also of similar form, having a number of cutters on each side of the plate, projecting like those on the grooving wheel, cuts the rabbet on the side of the edge of the plank and leaves the tongue or match for the

Page 45 U. S. 651

groove. By placing the planing wheel axis and cutter knives vertical, the same wheel will plane two planks or other material in the same time of one, by moving the plank or other material opposite ways, and parallel with each other against the periphery of the planing or moulding wheel. The groove and tongue may be cut in the plank or other material at the same time, by adding a grooving and rabbeting wheel."

"Said William Woodworth does not claim the invention of circular saws or cutter wheels, knowing they have long been in use, but he claims as his invention the improvement and application of cutter or planing wheels to planing boards, plank, timber, or other material; also his improved method of cutters for grooving and tonguing, and cutting mouldings on wood, stone, iron, metal, or other material, and also for facing and dressing brick, as all the wheels may be used single and separately for moulding, or any other purpose before indicated. He also claims as his improved method the application of circular saws for reducing floor plank and other materials to a width."

"Dated Troy, December 4, 1828"

"WILLIAM WOODWORTH"

"HENRY EVERTS"

"D. S. GLEASON"

"Witnesses"

On 25 April, 1829, one Uri Emmons obtained a patent for a new and useful improvement in the mode of planing floor plank, and grooving, and tonguing, and straightening the edges of the same, planing boards, straightening and planing square timber &c., by machinery, at one operation, called the cylindrical planing machine. The said letters patent, and specification attached thereto, being in the following words and figures.

"Uri Emmons' Patent"

"United States of America to all to whom these letters patent shall come: "

"Whereas, Uri Emmons, a citizen of the United States, hath alleged that he has invented a new and useful improvement in the mode of planing floor plank and grooving and tonguing the edges of the same, planing boards, straightening and planing square timber &c., by machinery, at one operation, called 'the cylindrical planing machine,' which improvement he states has not been known or used before his application, hath made oath that he does verily believe that he is the true inventor or discoverer of the said improvement, hath paid into the Treasury of the United States the sum of thirty dollars, delivered a receipt for the same, and presented a petition to the Secretary of State, signifying a desire of obtaining an exclusive property in the said improvement, and praying that a patent may be granted for that purpose. These are therefore to grant, according to law, to the said Uri Emmons, his

Page 45 U. S. 652

heirs, administrators, or assigns for the term of fourteen years from the twenty-fifth day of April, one thousand eight hundred and twenty-nine, the full and exclusive right and liberty of making, constructing, using, and vending to others to be used, the said improvement, a description whereof is given, in the words of the said Uri Emmons himself, in schedule hereto annexed, and is made a part of these presents."

"In testimony whereof I have caused these letters to be made patent and the seal of the United States to be hereunto affixed."

"Given under my hand at the City of Washington this twenty-fifth day of April in the year of our Lord one thousand eight hundred and twenty-nine and of the independence of the United States of America the fifty-third."

"[SEAL] [Signed] ANDREW JACKSON"

"By the President"

"[Signed] M. VAN BUREN"

"City of Washington, to-wit:"

"I do hereby certify that the foregoing letters patent were delivered to me on the twenty-fifth day of April in the year of our Lord one thousand eight hundred and twenty-nine, to be examined; that I have examined the same, and find them conformable to law, and I do hereby return the same to the Secretary of State, within fifteen days from the date aforesaid, to-wit, on the twenty-fifth day of April in the year aforesaid."

"[Signed] J. MACPHERSON BERRIEN"

"Attorney General of the United States"

"Schedule"

"The schedule referred to in these letters patent, and making part of the same, containing a description, in the words of the said Uri Emmons himself, of his improvement in the mode of planing floor plank, and grooving, and tonguing, and straightening the edges of the same, planing boards, straightening and planing square timber &c., by machinery, at one operation, called the cylindrical planing machine."

"The machinery for the improvement consists:"

"1st. Of a frame of wood or metal."

"2d. Of the gear and fixtures combined and connected together for the above-named operation, the principle of which consists in running the plank, boards, or timber over, under, or at the sides of a cylinder of wood or metal, on which knives are placed, straight or spiral, with their edges exactly corresponding with each other, having from two to twelve knives or edges; also burrs or saws, similar to those used for cutting teeth in brass wheels, to groove and tongue the edge of the boards or plank as they pass through between rollers, or on a carriage, by the surface of the cylinder.

Page 45 U. S. 653

The shape, form, and construction of the above principle may be varied in shape and position, dimensions &c., still the same in substance -- the same principle producing the same effect. I have by experimental operation found that the following mode in form is the best:"

"1st. A frame composed of two pieces of timber, from twelve to eighteen feet long, about six by ten inches broad, placed about fifteen inches apart, framed together with four girths, one at each end, and at equal distances from the center, and flush with the under side. This frame is supported by posts of a proper length, framed into the under side of the above pieces of timber, and braced so as to be of sufficient strength to maintain the operative posts. There is placed a roller in the center, of metal or hard wood, across the frame, the surface of the roller being even with the surface of the frame; directly above and parallel with this roller is hung the cylinder, with two or four spiral edges or knives, six to ten inches diameter, and hung on a cast steel arbor, resting in movable boxes attached to the sides of the frame, so as to set the cylinder up and down from the roller, to give the thickness of the timber to be planed. On each side of the cylinder is placed a pair of feeding rollers of hard wood or metal, the under one of each pair being level with the center one. The upper ones are hung in boxes, which are pressed down with springs or weights, so that when the timber comes between them they will hug and carry it through. These rollers are connected and turned by wheels at a velocity of about twelve feet surface of the roller per minute, the cylinder with two edges to make about two thousand five hundred revolutions per minute, cutting five thousand strokes every twelve feet; this can be varied according to the number of edges, power, and velocity of the different parts. The power is attached to the cylinder by a bolt running on a pulley, on the outward end of the cylinder shaft. Each way from the feeding rollers is placed rollers about two feet apart for the timber to rest on while running through. On one side of the frame is fastened a straight edge to serve as a guide, lined with metal; on the other side, rollers are placed in a piece of timber, which is pressed up to the plank or board to keep it close to the guide or straight edge by a spring. The grooving and tonguing is done by burrs or circular cutters similar to a saw; these burrs are hung on perpendicular spindles, the arbors of which rest in boxes attached to the inward side of the frame, a burr on one side to cut the groove, and on the other is placed two burrs, just as far apart as the thickness of the above one, for cutting the groove. At or near one end of the frame is hung a shaft, with a drum or roller, from which belts pass over to pulleys on each spindle of the burrs or circular cutters, which must have about the same velocity of the cylinder. These burrs are placed on one side of the cylinder, opposite to each

Page 45 U. S. 654

other, so as to cut the tongue to match the groove; on the other side of the cylinder is an arbor parallel with the cylinder, on which is placed circular cutters for planing the edges of the board or plank as they pass through. The cutter on the side next to the guide is stationary on the arbor; the opposite one is movable in the arbor, but fastened with screws to set it for different widths. A belt runs from a pulley on the end of the arbor, outside the frame, to the said drum, as also the same from the cylinder, each having about the same motion. The feeding rollers are put in motion by a belt from the slow part of the driving power. I have also put in operation a carriage for feeding, but rollers save the time of running the carriage back."

"Now what I, the said Uri Emmons, consider and claim as my improvement, and for which I solicit a patent, is as follows, namely:"

"1st. The principle of planing boards and plank with a rotary motion, with knives or edges on a cylinder, placed upon the same, straight or spiral, as before described, which I put in operation at Syracuse, in the County of Onondaga in the State of New York in the early part of the year 1824."

"2d. The burrs for grooving and tonguing, in contradistinction from the mode used by William Woodworth, he using the duckbill cutters."

"3d. The feeding, by running the timber through on a carriage, or between feeding rollers, guided by a straight edge, as before described."

"In testimony that the aforegoing is a true specification of my said improvement as before described, I have hereunto set my hand and seal the eighth day of April in the year of our Lord one thousand eight hundred and twenty-nine."

"[Signed] URI EMMONS"

"Witnesses:"

"THOS. THOMAS"

"SILAS HATHAWAY"

On 16 May, 1829, the said Emmons sold his entire interest in the last-mentioned patent to Daniel H. Toogood, Daniel Halstead, and William Tyack, by the following instrument:

"Deed from Emmons to Toogood, Halstead, and Tyack"

"Whereas Uri Emmons, of the State of New York, machinist, has received letters patent of the United States of America, dated April 25, one thousand eight hundred and twenty-nine, [for] the full and exclusive right and liberty of making, constructing, using, and vending to others to be used, a new and useful improvement in the mode of planing floor plank, and grooving and tonguing, and straightening the edges of the same, planing boards, straightening and planing square timber &c., by machinery, at one operation, called the cylindrical planing machine. "

Page 45 U. S. 655

"Now know all men by these presents that I, Uri Emmons, of the City of New York, in consideration of five dollars to me in hand paid by Daniel H. Toogood, Daniel Halstead, and William Tyack, all of said City of New York, who fully viewed and considered the said improvement and the said patent and specifications therein contained, have granted, sold, and conveyed, and by these presents do grant, sell, and convey, to the said Daniel H. Toogood, Daniel Halstead, and William Tyack, their heirs, executors, administrators, and assigns, the full and exclusive right and liberty derived from the said patent, of making, using, and vending to others to be made, used, and sold, the said improvement within and throughout the United States of America. To have and to hold and enjoy all the privileges and benefits which may in any way arise from the said improvement by virtue of said letters patent. And I do hereby empower the said Daniel H. Toogood, Daniel Halstead, and William Tyack, their heirs, executors, administrators, and assigns, to commence and prosecute to final judgment and execution, at their own cost, any suit or suits against any person or persons who shall make, use, or vend the said improvement, contrary to the intent of the said letters patent and law in such case made and provided, and to receive, for their own benefit, the avails thereof, in such manner as I might do."

"In witness whereof I have hereunto set my hand and seal this sixteenth day of May in the year of our Lord one thousand eight hundred and twenty-nine."

"URI EMMONS [SEAL]"

"Witnesses:"

"THOMAS AP THOMAS"

"ALEX. DEDDER"

"City and County of New York, ss.: "

"Be it remembered that on the sixteenth day of May, in the year of our Lord one thousand eight hundred and twenty-nine, before me personally appeared Uri Emmons, known to me to be the person described in and who executed the within deed, and acknowledged that he executed the same for the purposes therein mentioned, and there being no material alterations, erasures, or interlineations, I allow the same to be recorded."

"THOMAS THOMAS, Commissioner &c."

On 28 November, 1829, the following mutual deed of assignment was executed between Woodworth and Strong, on the one part, and Toogood, Halstead, Tyack, and Emmons, on the other part, by which Woodworth and Strong convey to Toogood, Halstead, and Tyack all their interest in the patent of December 27, 1828, in the following places, namely in the city and County of Albany, in the State of New York; in the State of Maryland, except the western part which lies west of the Blue Ridge; in Tennessee, Alabama, South Carolina, Georgia, the Floridas,

Page 45 U. S. 656

Louisiana, Missouri, and the territory west of the Mississippi; and Toogood, Halstead, Tyack, and Emmons conveyed to Strong and Woodworth all their interest in Emmons' patent of 25 April, 1829, for the rest and residue of the United States, by which mutual deed of assignment the parties agreed that any improvement in the machinery, or alteration, or renewal of either patent, such improvement, alteration, or renewal should accrue to the benefit of the respective parties in interest, and might be applied and used within their respective districts.

"Mutual Deed between Woodworth, Strong, Toogood, Halstead, Tyack, and Emmons"

"Know all men by these presents that William Woodworth, now of the City of New York, the patentee of an improved method of planing, tonguing, grooving &c., plank, boards &c., by letters patent from the United States dated December 29, 1828, and James Strong, of the City of Hudson, in the State of New York, the assignee of one equal half of the rights and interests secured by the aforesaid letters patent, of the one part, and Uri Emmons, of the City of New York, the patentee of an improvement in the mode of planing floor plank, and grooving, tonguing, and straightening the edges of the same &c., by letters patent from the United States dated April 25, 1829, and Daniel H. Toogood, Daniel Halstead, and William Tyack, of the City of New York, the assignees, by deed dated 16 May, 1829, of all the rights and interest secured by the last aforesaid patent to said Emmons, of the other part in consideration of the following covenants and agreements, do hereby covenant and agree as follows:"

"First. The said Woodworth and Strong and their assigns have, and hereby do assign to the said Toogood, Halstead, and Tyack and their assigns all their right and interest in the aforesaid patent to William Woodworth, to be sold and used, and the plank or other materials prepared thereby to be vended and used, in the following places, namely in the City and County of Albany in the State of New York; in the State of Maryland, except the western part thereof which lies west of the Blue Ridge; in Tennessee, Mississippi, Alabama, South Carolina, Georgia, the Floridas, Louisiana, and the territory west of the River Mississippi, and not in any other state or place within the limits of the United States or the territories thereof. To have and to hold the rights and privileges hereby granted to them and their assigns for and during the term of fourteen years from the date of the patent, and they are also authorized to prosecute at their own costs and charges any violation of the said patent in the same manner as the patentee, Woodworth, might lawfully do."

"Secondly. The said Emmons, Toogood, Halstead, and Tyack,

Page 45 U. S. 657

in consideration aforesaid, have and hereby do covenant and agree to assign and do assign, for themselves and assigns, to the said Woodworth and Strong and their assigns all their right and interest in the aforesaid patent granted to the said Uri Emmons, to be sold and used, and the plank or other material prepared thereby to be vended and used, in all and singular the rest and residue of the United States and the territories thereof -- that is to say in all places other than in those especially assigned to the said Toogood, Halstead, and Tyack as aforesaid. To have and to hold the said rights and privileges hereby granted to them and their assigns for and during the term of fourteen years from the date of the said letters patent to the said Uri Emmons, and they are also authorized to prosecute, at their own costs and charges, any violation of the said patent, in the same manner as the patentee, Uri Emmons, might lawfully do."

"Thirdly. And the two parties further agree that any improvement in the machinery or alteration or renewal of either patent, such alteration, improvement, or renewal shall accrue to the benefit of the respective parties in interest, and may be applied and used within their respective districts as hereinbefore designated."

"Witness our hands and seals at the City of New York, 28 November, 1829."

"WILLIAM WOODWORTH [SEAL]"

"JAMES STRONG [SEAL]"

"WILLIAM TYACK [SEAL]"

"D. H. TOOGOOD [SEAL]"

"DANIEL HALSTEAD [SEAL]"

"URI EMMONS [SEAL]"

Sealed and delivered, in presence of

THOMAS AP THOMAS

Witness to the signing of Toogood, Tyack, Halstead, and Emmons

Under this mutual assignment, the respective parties and their assignees would possess the following rights, namely, if they claimed under Woodworth's patent, to use the same for fourteen years from 29 December, 1828, that is to say until 29 December, 1842, and if they claimed under Emmons' patent, to use the same for fourteen years from 25 April, 1829, that is to say, until 25 April, 1843.

On one or the other of these days, therefore, if things had remained in the same condition, all rights either in the patentees or their assignees would have ceased as far as respected an exclusive use of the thing patented.

In 1836, Congress passed an act from which the following is an extract, and the construction of which was the chief controversy. Act approved 4 July, 1836, ch. 357, 5 Lit. & Brown's ed. 117,

Page 45 U. S. 658

§ 18.

"And be it further enacted that whenever any patentee of an invention or discovery shall desire an extension of his patent beyond the term of its limitation, he may make application therefor in writing to the Commissioner of the Patent Office, setting forth the grounds thereof, and the Commissioner shall, on the applicant's paying the sum of forty dollars to the credit of the Treasury, as in the case of an original application for a patent, cause to be published in one or more of the principal newspapers in the City of Washington, and in such other paper or papers as he may deem proper, published in the section of country most interested adversely to the extension of the patent, a notice of such application, and of the time and place when and where the same will be considered, that any person may appear and show cause why the extension should not be granted. And the Secretary of State, the Commissioner of the Patent Office, and the Solicitor of the Treasury shall constitute a board to hear and decide upon the evidence produced before them, both for and against the extension, and shall sit for that purpose at the time and place designated in the published notice thereof. The patentee shall furnish to the said board a statement in writing, under oath, of the ascertained value of the invention, and of his receipts and expenditures, sufficiently in detail to exhibit a true and faithful account of loss and profit in any manner accruing to him from and by reason of said invention. And if, upon a hearing of the matter, it shall appear to the full and entire satisfaction of said board, having due regard to the public interest therein, that it is just and proper that the term of the patent should be extended, by reason of the patentee, without neglect or fault upon his part, having failed to obtain, from the use and sale of his invention, a reasonable remuneration for the time, ingenuity, and expense bestowed upon the same, and the introduction thereof into use, it shall be the duty of the Commissioner to renew and extend the patent, by making a certificate thereon of such extension, for the term of seven years from and after the expiration of the term, which certificate, with a certificate of said board of their judgment and opinion as aforesaid, shall be entered on record in the Patent Office, and thereupon the said patent shall have the same effect in law as though it had been originally granted for the term of twenty-one years. And the benefit of such renewal shall extend to assignees and grantees of the right to use the thing patented to the extent of their respective interest therein. Provided however that no extension of a patent shall be granted after the expiration of the term for which it was originally issued."

On 3 February, 1839, William Woodworth, the patentee, died, and on 14 February, 1839, William W. Woodworth took out letters of administration upon his estate in the County of New York.

In 1842, William W. Woodworth, the administrator, applied for

Page 45 U. S. 659

an extension of the patent under the above-recited act of 1836, and on 16 November, 1842, the board issued the following certificate.

"In the matter of the application of William W. Woodworth, administrator on the estate of William Woodworth, deceased, in writing to the Commissioner of Patents for the extension of the patent for a new and useful improvement in the method of planing, tonguing, and grooving, and cutting into mouldings, or either, plank, boards, or any other material, and for reducing the same to an equal width and thickness, and also for facing and dressing brick and cutting mouldings on, or facing, metallic, mineral, or other substances, granted to the said William Woodworth, deceased, on 27 December, 1828, for fourteen years from said 27 December."

"The applicant having paid into the Treasury the sum of forty dollars, and having furnished to the undersigned a statement in writing, under oath, of the ascertained value of the invention, and of the receipt and expenditures thereon, sufficiently in detail to exhibit a true and faithful account of loss and profits in any manner accruing to said patentee from or by reason of said invention, and notice of application having been given by the Commissioner of Patents according to law, said board met at the time and place appointed, namely at the Patent Office, on 1 September, 1842, and their meetings having been continued by regular adjournments until this 16 November, 1842, they on that day heard the evidence produced before them both for and against the extension of said patent, and do now certify that upon hearing of the matter, it appears to their full and entire satisfaction, having due regard to the public interest therein, that it is just and proper that the term of said patent should be extended by reason of the patentee's, without neglect on his part, having failed to obtain from the use and sale of his invention a reasonable remuneration for the time, ingenuity, and expense bestowed upon the same, and the introduction thereof into use."

"Washington City, Patent Office, November 16, 1842."

"DANIEL WEBSTER"

"Secretary of State"

"CHAS. B. PENROSE"

"Solicitor of the Treasury"

"HENRY L. ELLSWORTH"

"Commissioner of Patents"

And on the same day, the Commissioner of Patents issued the following certificate.

"Whereas, upon the petition of William W. Woodworth, administrator of the estate of William Woodworth, deceased, for an

Page 45 U. S. 660

extension of the within patent, granted to William Woodworth, deceased, on 27 December, 1828. The Board of Commissioners, under the eighteenth section of the act of Congress approved 4 July, 1836, entitled an act to promote the progress of useful arts, to repeal all acts and parts of acts heretofore made for that purpose, did, on 16 November, 1842, certify that the said patent ought to be extended."

"Now therefore, I, Henry L. Ellsworth, Commissioner of Patents, by virtue of the power vested in me by said eighteenth section, do renew and extend said patent, and certify that the same is hereby extended for the term of seven years from and after the expiration of the first term, namely, 27 December, 1842, which certificate of said Board of Commissioners, together with this certificate of the Commissioner of Patents, having been duly entered of record in the Patent Office, the said patent now has the same effect in law as though the term had been originally granted for the term of twenty-one years."

"In testimony whereof, I have caused the seal of the Patent Office to be hereunto affixed, this 16 November, 1842."

"HENRY L. ELLSWORTH"

"Commissioner of Patents"

On 2 January, 1843, William W. Woodworth, the administrator, filed the following disclaimer.

"To all men to whom these presents shall come, I, William W. Woodworth, of Hyde Park, in the County of Duchess and State of New York, Esq., as I am administrator of the goods and estate which were of William Woodworth, deceased, hereinafter named, send greeting: "

"Whereas letters patent, bearing date on the twenty-seventh day of December, in the year of our Lord eighteen hundred and twenty-eight, were granted by the United States to William Woodworth, now deceased, for an improvement in the method of planing, tonguing, grooving, and cutting into mouldings, or either, boards, plank, or any other material, and for reducing the same to an equal width and thickness; and also for facing and dressing brick, and cutting mouldings on, or facing, metallic, mineral, or other substances. And whereas, before the term of fourteen years, for which the said letters patent were granted, had fully expired, such proceedings were had that, pursuant to the act of Congress in such case made and provided, the said letters patent were renewed or extended for the term of seven years from and after the expiration of the said term of fourteen years, and to the certificate granting the said extension and renewal unto me in my said capacity, bearing date on the sixteenth day of November now last past, and which is duly recorded according to act of Congress in that behalf, reference is

Page 45 U. S. 661

hereby made, as showing my title and interest in and to the said letters patent."

"And whereas the said William Woodworth, through inadvertence, accident, or mistake in his application for letters patent, made his specification of claim too broad, in this, namely, that he, the said William Woodworth, claimed as his improved method the application of circular saws for reducing floor plank and other material to width, of which he was not the original and first inventor. And whereas some material and substantial part of the said patented thing was justly and truly the invention and improvement of the said William Woodworth."

"Now therefore know ye that I, the said William Woodworth, in my capacity aforesaid, and as the person to whom the said certificate was granted as aforesaid, have disclaimed, and do by these presents, for myself, and for all claiming under me, disclaim, all and any exclusive right, title, property, or interest of, in, or to the application of circular saws for reducing floor plank or other materials to a width, by reason of the aforesaid letters patent, and the aforesaid renewal or extension thereof."

"In testimony whereof, I have hereto, in my capacity aforesaid, set my hand and seal, on this second day of January, in the year eighteen hundred and forty-three."

"WILLIAM W. WOODWORTH"

"Administrator of W. Woodworth, deceased"

"Executed in presence of"

"CHAS. W. EMESN"

"B. R. CURTIS"

In March, 1843, Woodworth, the administrator, made an assignment of his patent rights in some of the states to James G. Wilson, the plaintiff. At what time the assignment was made for New York, the record in that case did not state, but it was one of the admitted facts that he was the grantee. The assignment first referred to was recorded in the Patent Office in Liber 4, 291, 292, on 20 March, 1843.

On 9 August, 1843, the administrator assigned his right to Wilson, in and for the State of Maryland.

On the 26th of February, 1845, Congress passed the following act.

"An act to extend a Patent heretofore granted to William Woodworth."

"Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled that the patent granted to William Woodworth on the twenty-seventh day of December, in the year one thousand eight hundred and twenty eight, for his improvement on the method of planing, tonguing, grooving, and cutting into mouldings, or either, plank, boards, or

Page 45 U. S. 662

any other material, and for reducing the same to an equal width and thickness, and also for facing and dressing brick, and cutting mouldings on and facing several other substances, a description of which is given in a schedule annexed to the letters patent granted as aforesaid be, and the same is, hereby extended for the term of seven years from and after 27 December in the year one thousand eight hundred and forty-nine, and the Commissioner of Patents is hereby directed to make a certificate of such extension in the name of the administrator of the said William Woodworth, and to append an authenticated copy thereof to the original letters patent, whenever the same shall be requested by the said administrator or his assigns."

"Approved February 26, 1845."

"A true copy from the roll of this office."

"R. K. CRALLE, Chief Clerk"

"Department of State, March 3, 1845"

And on 3 March, 1845, the following certificate was issued.

"In conformity, therefore, with the directions in the said act contained, I, Henry L. Ellsworth, Commissioner of Patents, do hereby certify that the patent therein described is, by the said act, extended to William W. Woodworth, administrator of said William Woodworth, for the term of seven years from and after the twenty-seventh day of December in the year one thousand eight hundred and forty-nine, and this certificate of such extension is made on the original letters patent, on the application of William W. Woodworth, the administrator of the said William Woodworth."

"In testimony whereof, I have caused the seal of the Patent Office to be hereunto affixed, this 3 March, 1845."

"HENRY L. ELLSWORTH"

"Commissioner of Patents"

On 8 July, 1845, a new patent was issued, with an amended specification, as follows

"The United States of America to all to whom these letters patent shall come: "

"Whereas William W. Woodworth, administrator of William Woodworth, deceased, of Hyde Park, N.Y., has alleged that said William Woodworth invented a new and useful improvement in machines for planing, tonguing, and grooving, and dressing boards &c., for which letters patent were granted, dated 27 December, 1828, which letters patent have been extended (as will appear by the certificates appended thereto, copies of which are hereunto attached) for fourteen years from the expiration of said letters patent, and which letters patent are hereby cancelled on

Page 45 U. S. 663

account of a defective specification, which he states has not been known or used before said William Woodworth's application; has made oath that he is, and that said William Woodworth was, a citizen of the United States; that he does verily believe that said William Woodworth was the original and first inventor or discoverer of the said improvement, and that the same hath not, to the best of his knowledge and belief, been previously known or used; has paid into the Treasury of the United States the sum of fifteen dollars, and presented a petition to the Commissioner of Patents, signifying a desire of obtaining an exclusive property in the said improvement, and praying that a patent may be granted for that purpose."

"These are therefore to grant, according to law, to the said William W. Woodworth, in trust for the heirs at law of said W. Woodworth, their heirs, administrators, or assigns, for the term of twenty-eight years from the twenty-seventh day of December, one thousand eight hundred and twenty-eight, the full and exclusive right and liberty of making, constructing, using, and vending to others to be used, the said improvement, a description whereof is given in the words of the said William W. Woodworth, in the schedule hereunto annexed, and is made part of these presents."

"In testimony whereof, I have caused these letters to be made patent, and the seal of the Patent Office has been hereunto affixed."

"Given under my hand, at the City of Washington, this eighth day of July, in the year of our Lord one thousand eight hundred and forty-five, and of the independence of the United States of America the seventieth."

"JAMES BUCHANAN"

"Secretary of State"

"Countersigned, and sealed with the seal of the Patent Office."

"HENRY H. SYLVESTER"

"Acting Com'r of Patents"

"The schedule referred to in these letters patent, and making part of the same:"

"To all whom it may concern: Be it known that the following is a full, clear, and exact description of the method of planing, tonguing, and grooving plank or boards, invented by William Woodworth, deceased, and for which letters patent of the United States were granted to him on 27 December, in the year one thousand eight hundred and twenty-eight, the said letters patent having been surrendered for the purpose of describing the same invention, and pointing out in what it consists, in more clear, full, and exact terms than was done in the original specification. "

Page 45 U. S. 664

"Amended Specification"

"The plank or boards which are to be planed, tongued, or grooved are first to be reduced to a width by means of circular saws, by reducing wheels, or by any other means. When circular saws are used for this purpose, two such saws should be placed upon the same shaft, on which they are to be capable of adjustment, so that they may be made to stand at any required distance apart; under these the board or plank is to be forced forward, and brought to the width required; this apparatus and process do not require to be further explained, they being well understood by mechanicians."

"When what has been above denominated reducing wheels are used, these are to consist of revolving cutter wheels, which resemble in their construction and action the planing and reducing wheel to be presently described; these are to be made adjustable like the circular saws, but the latter are preferred for this purpose. The plank may be reduced to a width on a separate machine."

"When the plank or boards have been thus prepared (on a separate machine), they may be placed on or against a suitable carriage, resting on a frame or platform, so as to be acted upon by a rotary cutting or planing and reducing wheel; which wheel may be made to revolve either horizontally or vertically, as may be preferred. The carriage which sustains the plank or board to be operated upon may be moved forwards by means of a rack and pinion, by an endless chain or band, by geared friction rollers, or by any of the devices well known to machinists for advancing a carriage or materials to be acted upon in machines for various purposes. The plank or board is to be moved on towards the cutting edges of the cutters or knives, on the planing cylinder, so that its knives or cutters, as they revolve, may meet and cut the plank or board in a direction contrary to that in which it is made to advance; the edges of the cutters are, in this method, prevented from coming first into contact with its surface, and are made to cut upwards from the reduced part of the plank towards said surface, by which means their edges are protected from injury by gritty matter, and the board or plank is more evenly and better planed than when moved in the reversed direction."

"After the board or plank passes the planing cylinder, and as soon, or fast, as the planing cylinder has done its work on any part of the board or plank, the edges are brought into contact with two revolving cutter wheels, one of which wheels is adapted to the cutting of the groove, and the other to the cutting of the two rebates that form the tongue. When the axis of the planing and reducing wheel stands vertically, the grooving and tonguing wheels are placed one above the other, with the plank edgewise between

Page 45 U. S. 665

them; when the axis of the planing wheel stands horizontally, these wheels are on the same horizontal plane with each other, standing on perpendicular spindles."

"The grooving wheel consists of a circular plate fixed on an axis, and having one, two, three, four, or more cutters, which are to be screwed, bolted, or otherwise attached to it, the edges of which cutters project beyond the periphery of the plate to such distance as is required for the depth of the groove; their thickness may be such as is necessary for its width; the are, of course, so situated as to cut the groove in the middle of the edge of the board, or as nearly so as may be required. The tonguing wheel is similar in form to the grooving wheel, but it has cutters on each of its sides, or otherwise, so formed and arranged as to cut the two rebates which are necessary to the formation of the tongue."

"The grooving and tonguing cutters, at the same time and by the same operation, reduce the board or plank to an exact width throughout. When the axis of the planing wheel is placed vertically, the knives or cutters may be made to plane two planks at the same time; the planks being in this case moved in contrary directions, and so as to meet the edges of the revolving knives or cutters. When the machine is thus constructed, a second pair of grooving and tonguing wheels may be made to operate in the same way with those above described. A machine to operate upon a single plank or board, and having the axis of the planing wheel placed horizontally, will however be more simple and less expensive than that intended to operate on two planks simultaneously."

"In the accompanying drawing, fig. 1 is a perspective representation of the principal operating parts of the machine when arranged and combined for planing, tonguing, and grooving, and when so arranged as to be capable of planing two planks at the same time, the axis of the planing wheel being placed vertically. A A is a stout substantial frame of the machine, which may be of wood or of iron, and may be varied in length, size, and strength, according to the work to be done. B B are the heads of the planing cylinder, and C C the knives or cutters, which extend from one to the other of said heads, to the peripheries of which they may be attached by means of screws. The knives C C, with the faces forming a planing angle, may be placed in a line with the axis, J, of the cylinder, or they may stand obliquely thereto, as may be preferred; but in the latter case the edge should form the segment or portion of a helix; b represents a pulley near to the upper end of the axis J; and I, a pulley or drum, which may be made to revolve by horse, steam, or other motive power, and from which a belt may extend around the pulley b, to drive the planing cylinder and other parts of the machinery; G is the carriage, which is represented as being driven forward by means of a rack

Page 45 U. S. 666

and pinion, H; against this carriage, the plank K, which is to be planed, tongued, and grooved, is placed, and is made to advance with it. It will be manifest, however, that the plank may be moved forward by other means, as, for example, by an endless chain or band, passing around drums or chain wheels, or by means of geared friction wheels borne up against it. To cause the carriage and plank to move forward readily, there may be friction rollers, f f f, placed horizontally, and extending under them; the rollers, f f f, which stand vertically, are to be made to press against the plank and keep it close to the carriage, and thus prevent the action of the cutters from drawing the plank up from its bed in cutting from the planed surface upwards; they may be borne against it by means of weights or springs in a manner well known to machinists. In a single horizontal machine, the horizontal friction rollers may be geared, and the pressure rollers placed above them to feed the board with or without the carriages, a bed plate being used directly under the planing cylinder."

"Fig. 2 is a separate view of the planing cylinder, with its knives or cutters; and fig. 3, an end view of one of the heads. E E are the revolving cutters, or tonguing and grooving wheels, and D D, whirls upon their shafts, which may be driven by bands, or otherwise, so as to cause said wheels to revolve in the proper direction."

"Fig. 4 is a side view of one of these wheels; fig. 5 is an edge view of the tonguing wheel; and fig. 6, an edge view of the grooving wheel; the latter being each shown with two cutters in place. The number of cutters on these wheels may be varied, but they are represented as furnished with four. The cutters may be fixed on the sides of circular plates, with their edges projecting beyond the periphery of said plate."

"The edges of the plank, as its planed part passes the planing cylinder, are brought in contact with the above-described tonguing and grooving wheels, which are so placed upon their shafts as that the tongue and groove shall be left at the proper distance from the face of the plank, the latter being sustained against the planing cylinder by means of the carriage or bed plate, or otherwise, so that it cannot deviate, but must be reduced to a proper thickness, and correctly tongued and grooved."

"In fig. 1, above referred to, only one carriage and one pair of cutter wheels are shown, it not being deemed necessary to represent those on the opposite side, they being similar in all respects."

"Fig. 7 represents the same machine, with the axis of the planing cylinder placed horizontally, and intended to operate on one plank only at the same time. A A is the frame; B B, the heads of the planing cylinder; C C, the knives or cutters attached to said heads. To meet the different thicknesses of the planks

Page 45 U. S. 667

or boards, the bearings of the shaft or cylinder may be made movable, by screws or other means, to adjust it to the work; or the carriage or bed plate may be made so as to raise the board or plank up to the planing cylinder. E and E' are the revolving cutters, or tonguing and grooving wheels, which are placed upon vertical shafts, having upon them pulleys, D D, around which pass belts or bands from the main drum, I, to which a revolving motion may be given by any adequate motive power."

"From the drum, I, a belt, L, passes also around the pulley, b, on the shaft of the planing cylinder, and gives to it the requisite motion. There may in this machine be a horizontal carriage moved forward by a rack and pinion, in a manner analogous to that represented in fig. 1; but in the present instance the plank is supposed to be advanced by means of one or two pairs of friction or feed rollers, shown at f f'; the uppermost, f' f', of the pairs of rollers may be held down by springs, or weighted levers, which it has not been thought necessary to show in this drawing, as such are in common use. The lowermost of these rollers may be fluted or made rough on their surfaces, so as to cause friction on the under side of the plank. M M' are pulleys on the axles of these lower rollers which are embraced by bands, N N', which also pass around a pulley, O, on a shaft which crosses the frame, A A, and has a pulley, T, on it, which is embraced by the belt, P, on a pulley, Q, on the shaft of the main drum, I; these bands and pulleys serve to give motion to the feed rollers, as will be readily understood by inspecting the drawing. R R are guide strips, used in place of the rollers used for the same purpose and also for bearing or friction rollers, when the machine is vertical, to direct one edge of the plank, and against its opposite edge; any pressure may be used equal to the weight of the board or plank, when worked in a vertical position. One of the cutter wheels should be made adjustable, to adapt it to stuff of different widths."

"The planing cylinder, and likewise the cutter or tonguing and grooving wheels, may be constructed in the manner represented in figures 2, 3, 4, 5, and 6, and hereinbefore fully described. One of the heads of the planing wheel may be made movable to accommodate its width to the width of the boards or plank to be planed."

"The respective parts of this machine may be varied in size, as may also the velocity of the motion of the planing cylinders and cutter wheels, but the following has been found to answer well in practice. The planing cylinder, having four knives or cutters, may be twelve inches in diameter, and may make two thousand and upwards revolutions in a minute. In a machine like that shown in fig. 7, the main drum, I, may be two feet in diameter and may be driven with the speed of five hundred and upwards revolutions in a minute. The pulleys on the planing cylinder, and on the

Page 45 U. S. 668

cutter wheels, may be six inches in diameter. The plank should be moved forward at the rate of about one foot for every hundred revolutions of the cutter wheel, and of course the diameter of the feed rollers and of the pulleys by which they are turned must be so graduated as to produce this result. The size and speed of the above parts of this machine may be in some degree varied, but the above have been found to work well."

"Having thus fully described the parts and combination of parts, and operation of the machine for planing, tonguing, and grooving boards or plank, and shown various modes in which the same may be constructed and made to operate without changing the principle or mode of operation of the machine, what is claimed therein as the invention of William Woodworth, deceased, is the employment of rotating planes, substantially such as herein described, in combination with rollers, or any analogous device, to prevent the boards from being drawn up by the planes when cutting upwards, or from the reduced or planed to the unplaned surface, as described."

"And also the combination of the rotating planes with the cutter wheels for tonguing and grooving, for the purpose of planing, tonguing, and grooving boards &c., at one operation, as described. And also the combination of the tonguing and grooving cutter wheels for tonguing and grooving boards, and at one operation, as described."

"And finally, the combination of either the tonguing or the grooving cutter wheel for tonguing or grooving boards &c., with the pressure rollers, as described, the effect of the pressure rollers in these operations being such as to keep the boards &c., steady, and prevent the cutters from drawing the boards towards the center of the cutter wheels, whilst it is moved through by machinery. In the planing operation, the tendency of the plane is to lift the boards directly up against the rollers, but in the tonguing and grooving, the tendency is to overcome the friction occasioned by the pressure of the rollers."

"WILLIAM W. WOODWORTH"

"Administrator of William Woodworth, deceased"

"Witnesses:"

"JAMES MILHOLLAND"

"CHS. M. KELLER"

The above papers show the title of the administrator, who was the grantor of Wilson, the plaintiff in the suit. The record in the New York case was exceedingly brief, and contained neither the declaration nor pleas, but only the state of the pleadings and the existence of demurrers. But from the eighth fact in the statement of facts, in which it is said that

"the defendants trace no title to themselves to a right to use said machines from the assignment

Page 45 U. S. 669

made by William Woodworth and James Strong to Halstead, Toogood, and Tyack,"

the inference must be, that their defense was in showing an outstanding title.

The following is the entire case presented by the New York record.

"United States of America, Northern District of New York:"

"At a Circuit Court of the United States, begun and held at Albany, for the Northern District of New York, on Tuesday, the twenty-first day of October, in the year of our Lord one thousand eight hundred and forty-five, and in the seventieth year of American independence."

"Present, the Honorable Samuel Nelson and Alfred Conkling, Esquires."

"JAMES G. WILSON"

"v."

"LEWIS ROUSSEAU AND CHARLES EASTON"

"State of the Pleadings"

"This is an action on the case to recover damages for the alleged infringement of letters patent issued to William Woodworth, on 27 December, 1828, for the term of fourteen years, for an improvement in machinery for planing, tonguing, and grooving boards and plank at one operation, which letters patent were, on 16 November, 1842, extended for seven years more, such extension being granted to William W. Woodworth, as administrator of said William Woodworth."

"To the first count of the plaintiff's declaration the defendants interposed three several special pleas in bar, to each of which pleas the plaintiff demurred, and the defendants joined in demurrer. To the second count of the plaintiff's declaration the defendants demurred, and the plaintiff joined in demurrer."

"The case coming on to be argued at this term, the following questions occurred for decision, to-wit:"

"1. Whether the eighteenth section of the patent act of 1836 authorized the extension of a patent on the application of the executor or administrator of a deceased patentee."

"2. Whether by force and operation of the eighteenth section of the Act of July 4, 1836, entitled 'An act to promote the progress of the useful arts,' &c., the extension granted to William W. Woodworth, as administrator, on 16 November, 1842, inured to the benefit of assignees, under the original patent granted to William Woodworth, on 27 December, 1828, or whether said extension inured to the benefit of the administrator only, in his said capacity."

"3. Whether the extension specified in the foregoing second point inured to the benefit of the administrator to whom the same

Page 45 U. S. 670

was granted, and to him in that capacity exclusively, or whether, as to the territory specified in the contract of assignment made by William Woodworth and James Strong to Toogood, Halstead, and Tyack, on 28 November, 1829 (and set forth in the second plea of the defendants to the first count of the declaration), and by legal operation of the covenants contained in said contract, the said extension inured to the benefit of the said Toogood, Halstead, and Tyack, or their assigns."

"4. Whether the plaintiff, claiming title under the extension from the administrator, can maintain an action for an infringement of the patent right within the territory specified in the contract of assignment to Toogood, Halstead, and Tyack, against any person not claiming under said assignment; or whether the said assignment be of itself a perfect bar to the plaintiff's suit."

"5. Whether the extension specified in the second point could be applied for and obtained by William W. Woodworth as administrator of William Woodworth, deceased, if the said William Woodworth, the original patentee, had, in his lifetime, disposed of all his interest in the then existing patent, having, at the time of his death, no right or title to, or interest in, the said original patent, or whether such sale carried with it nothing beyond the term of said original patent, and if it did not, whether any contingent rights remained in the patentee or his representatives."

"6. Whether the plaintiff, if he be an assignee of an exclusive right to use two of the patented machines within the Town of Watervliet, has such an exclusive right as will enable him to maintain an action for an infringement of the patent within said town, or whether, to maintain such action, the plaintiff must be possessed, as to that territory, of all the rights of the original patentee."

"7. Whether the letters patent of renewal issued to William W. Woodworth, as administrator aforesaid, on 8 July, 1845, upon the amended specification and explanatory drawings then filed, be good and valid in law, or whether the same be void, for uncertainty, ambiguity, or multiplicity of claim, or any other cause."

"8. Whether the court can determine, as matter of law, upon an inspection of the said two patents and their respective specifications, that the said new patent of 8 July, 1845, is not for the same invention for which the said patent of 1828 was granted."

"9. Whether the decision of the Board of Commissioners, who are to determine upon the application for the extension of a patent, under the eighteenth section of the act of 1836, is conclusive upon the question of their jurisdiction to act in the given case."

"10. Whether the Commissioner of Patents can lawfully receive a surrender of letters patent for a defective specification, and issue new letters patent upon an amended specification, after the expiration of the term for which the original patent was granted, and

Page 45 U. S. 671

pending the existence of an extended term of seven years; or whether such surrender and renewal may be made at any time during such extended term."

"On which questions the opinions of the judges were opposed."

"Whereupon, on a motion of the plaintiff, by William H. Seward, his counsel, that the points on which the disagreement hath happened may, during the term, be stated under the direction of the judges, and certified under the seal of the court to the supreme court, to be finally decided."

"It is ordered that the foregoing state of the pleadings, and the following statement of facts, which is made under the direction of the judges, be certified, according to the request of the plaintiff by his counsel, and the law in that case made and provided, to-wit:"

"1. That William Woodworth, as the inventor of a machine, or improvement in machinery, for planing, tonguing, and grooving boards and plank at one operation, on 27 December, in the year 1828, applied to the proper department of the government for a patent for said invention, and upon the same day, on filing his specifications and explanatory drawings, and complying with the other legal prerequisites, letters patent, signed by the President, and under the seal of the United States, were duly issued to the said William Woodworth, granting to him the exclusive right, throughout the United States, to construct and use, and vend to others to be used, the machine or improvement patented, for and during the term of fourteen years from the said 27 December, 1828."

"2. That subsequently, to-wit, on 28 November, 1829, the said William Woodworth and James Strong, who had become jointly interested with said Woodworth in the rights secured by the said letters patent by contract of assignment of that date, transferred to Daniel H. Toogood, Daniel Halstead, and William Tyack all their right and interest in and to the said patent for certain parts and portions of the United States in said contract specifically set forth, including the city and county of Albany, in the State of New York, which is the domicile of the defendants."

"3. That the habendum in said contract of assignment is in the words following, to-wit:"

"To have and to hold the rights and privileges hereby granted for and during the term of fourteen years from the date of the patent."

"And that the third clause in said contract of assignment is in the following words, to-wit:"

"And the two parties further agree, that any improvement in the machinery, or alteration or renewal of either patent, such improvement, alteration, or renewal, shall inure to the benefit of the respective parties interested, and may be applied and used within their respective districts, as hereinbefore designated. "

Page 45 U. S. 672

"4. That previous to the expiration of the fourteen years' limitation of said patent, William Woodworth, the patentee, died, to-wit, on 9 February, 1839; that William W. Woodworth was thereupon duly appointed, and now is, administrator of the estate of the said William Woodworth, and that said Woodworth, in his lifetime, had sold all his interest in the said original patent."

"5. That William W. Woodworth, as administrator aforesaid, on 16 November, 1842, under the eighteenth section of the Act of Congress of July 4, 1836, applied to the Board of Commissioners created by the said section for an extension of said patent; and that, upon complying with the requisites in said section prescribed, an extension of said patent was granted by said board to William W. Woodworth, as administrator of the estate of William Woodworth, on said 16 November, 1842, and letters patent of extension were on said day duly issued to him, granting to him, in his aforesaid capacity, the exclusive right to make and use, and vend to others to be used, the said invention or improvement, for the term of seven years from and after the term of limitation of said original patent."

"6. That on 8 July, 1845, the said William W. Woodworth, in his capacity as administrator aforesaid, and in accordance with the provisions of the thirteenth section of the said act of July 4, 1836, made a surrender to the Commissioner of Patents of the letters patent to him granted on 16 November, 1842, for an insufficiency of the specification upon which said original patent was issued, and upon filing a corrected and amended specification, with explanatory drawings, a copy of which is annexed hereto and made a part of this statement, the said Commissioner, on said 8 July, 1845, issued to the said William W. Woodworth new letters patent of said invention for the unexpired term of the first extension thereof, and of the extension granted by special act of Congress on 26 February, 1845."

"7. That the defendants in this action have erected and put in operation, in the town of Watervliet, which is within the County of Albany and State of New York, one or more machines for planing, tonguing, and grooving boards and plank, substantially the same in principle and mode of operation as that the subject of the patent granted to William Woodworth."

"8. That the defendants trace no title to themselves to a right to use said machines from the assignment made by William Woodworth and James Strong to Halstead, Toogood, and Tyack."

"9. That the plaintiff in this action is the grantee of William W. Woodworth, as administrator, of the exclusive right to construct and use, and vend to others to be used, two of said patented machines within said town of Watervliet, in said county of Albany and State of New York. "

Page 45 U. S. 673

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