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
MR. JUSTICE NELSON delivered the opinion of the Court.
The questions in this case come before us on a certificate of
division of opinion from the Circuit Court of the United States for
the Northern District of New York involving the construction of
various provisions of the act of Congress to promote the progress
of useful arts, commonly called the patent act. We shall examine
the questions in the order in which they appear on the record. The
first is as follows:
1. Whether the eighteenth section of the act of 1836 authorized
the extension of a patent on the application of the executor or
administrator of a deceased patentee.
The eighteenth section provides, in substance, 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. That 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
application; the patentee shall furnish to the board a statement in
writing, under oath, of the value and usefulness 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 the invention, and if,
upon a hearing of the matter, it shall appear to the satisfaction
of the board, having a due regard to the public interest, that it
is just and proper the term of the patent should be extended, by
reason of the patentee, without neglect or fault 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, 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 first
term, &c.
This is the substance of the section so far as is material to
the consideration of the question, and it will be seen that,
according to the words of the provision, the application is to be
made by, and the new term to be granted to, the patentee himself,
and hence the objection on account of its having been granted to
the administrator.
The main argument relied on to support the objection is that the
patentee had no interest or right of property in the extended term
at
Page 45 U. S. 674
the time of his death. That all he had was a mere possibility,
too remote and contingent to be regarded as property, or any right
of property, in the sense of the law, and therefore not assets or
rights in the hands of the administrator which would authorize an
application within the meaning of the statute.
At common law, the better opinion, probably, is that the right
of property of the inventor to his invention or discovery passed
from him as soon as it went into public use with his consent; it
was then regarded as having been dedicated to the public, as common
property, and subject to the common use and enjoyment of all.
The act of Congress for the encouragement of inventors, and to
promote the progress of the useful arts, and for the purpose of
remedying the imperfect protection, or rather want of protection,
of this species of property, has secured to him, for a limited
term, the full and exclusive enjoyment of his discovery.
The law has thus impressed upon it all the qualities and
characteristics of property, for the specified period; and has
enabled him to hold and deal with it the same as in case of any
other description of property belonging to him, and on his death it
passes, with the rest of his personal estate, to his legal
representatives, and becomes part of the assets.
Congress have not only secured to the inventor this absolute and
indefeasible interest and property in the subject of the invention
for the fourteen years, but have also agreed, that upon certain
conditions occurring and to be shown, before the expiration of this
period, to the satisfaction of a board of Commissioners, an
indifferent tribunal designated for the purpose, this right of
property in the invention shall be continued for the further term
of seven years. Subject to this condition, the right of property in
the second term is as perfect, to the extent of the intent, as the
right of property in the first.
The circumstances upon which the condition rests, and the
occurrence of which gives effect and operation to the further grant
of the government, are by no means uncommon, or difficult to be
shown. They have often happened to inventors in the course of their
dealings with this species of property. The act of Congress
contemplates their occurrence again, and has therefore provided
further security and protection, by enlarging the interest and
right of property in the subject of their invention.
The provision is founded upon the policy of the government to
encourage genius, and promote the progress of the useful arts, by
holding out an additional inducement to the enjoyment of the right
secured under the first term, and as an act of justice to the
inventors for the time, ingenuity, and expense bestowed in bringing
out the discovery, frequently of incalculable value to the business
interests of the country. And it is apparent, therefore, unless the
executor or administrator is permitted to take the place of the
Page 45 U. S. 675
patentee in case of his death, and make application for the
grant of the second term, which continues the exclusive enjoyment
of the right of property in the invention, the object of the
statute will be defeated, and a valuable right of property,
intended to be secured, lost to his estate.
The statute is not founded upon the idea of conferring a mere
personal reward and gratuity upon the individual, as a mark of
distinction for a great public service, which would terminate with
his death, but of awarding to him an enlarged interest and right of
property in the invention itself, with a view to secure to him with
greater certainty a fair and reasonable remuneration. And to the
extent of this further right of property, thus secured, whatever
that may be, it is of the same description and character as that
held and enjoyed under the patent for the first term. In its
nature, therefore, it continues, and is to be dealt with, after the
decease of the patentee, the same as an interest under the first,
and passes, with other rights of property belonging to him, to the
personal representatives, as part of the effects of the estate.
It would seem, therefore, from the nature of this interest in an
extended term itself, as well as from a consideration of the object
and purpose of the statute, plainly expressed upon its face, in
providing for the prolonged enjoyment and protection of this
species of property, that the Board of Commissioners were well
warranted in making the renewed grant to the administrator upon his
complying with the conditions.
An argument has been urged against this conclusion, grounded
upon the tenth and thirteenth sections of the patent law. The
former provides in express terms for the issuing of a patent to the
executor or administrator, in case of the death of the inventor
before it is taken out; and the latter, for a surrender of a patent
defective by reason of an insufficient description, and the
reissuing of a new one. These are supposed to be analogous cases,
and manifest the sense of Congress, that, without the express
provisions of law, the patent in the one case, and the surrender in
the other, could not be issued to, or be made by, the legal
representative. The argument is no doubt a proper one, and entitled
to consideration, but is not necessarily conclusive.
As it respects the provision for a surrender by the executor or
administrator, which is most analogous to the question in hand, we
think there could be no great doubt that the right would exist in
the absence of any such express authority, regard being had to the
nature of the property, and the rights and duties of the legal
representative, within the spirit and object of the patent law. It
would be the surrender of a patent, the legal interest and property
in which had become vested in him as part of the assets, which he
was bound to take care of, and protect against waste, a step
necessary to perfect the title and give value to the property
Page 45 U. S. 676
would seem to be not only directly within the line of his duty,
but in furtherance of the chief object of the law, namely to secure
remuneration to the meritorious inventor.
It has also been argued that the executor or administrator could
not comply with the terms and conditions of the eighteenth section,
upon which the right of property in the extended term is made to
depend. In other words, that he would be unable to furnish to the
Board of Commissioners a statement under oath of the usefulness of
the invention, and of the receipts and expenditures of the
patentee, exhibiting a true and faithful account of the loss and
profit in any manner accruing from, and by reason of, the
invention. This argument assumes as a matter of fact that which may
well be denied. Suppose the dealings of the patentee in the subject
of his discovery have been carried on through the instrumentality
of agents or clerks, or, if not, that the patentee himself, as
businessmen usually do, has kept an accurate account of his
receipts and expenditures, all difficulty at once disappears. The
account books of a deceased party, in many of the states of the
Union, identified and the handwriting proved, are received as legal
evidence of the demand in the courts of justice, and afford full
authority, upon legal principles, for the admission of the books
before the board, in support of the application. We perceive no
great difficulty in a substantial compliance with the terms of the
section, on the part of the executor or administrator.
The second question is whether, by force and operation of the
eighteenth section already referred to, the extension granted to W.
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.
The most of this section has already been recited in the
consideration of the first question, and it will be unnecessary to
repeat it. It provides for the application of the patentee to the
commission for an extension of the patent for seven years;
constitutes a board to hear and decide upon the application; and if
his receipts and expenditures, showing the loss and profits
accruing to him from and on account of his invention, shall
establish, to the satisfaction of the board, that the patent should
be extended by reason of the patentee, without any fault on his
part, having failed to obtain from the use and sale of his
invention a reasonable remuneration for his time, ingenuity, and
expense bestowed upon the same, and the introduction of it into
use, it shall be the duty of the Commissioners to extend the same
by making a certificate thereon of such extension for the term of
seven years from and after the first term, "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
Page 45 U. S. 677
years." And then comes the clause in question:
"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 interests therein."
The answer to the second question certified depends upon the
true construction of the above clause respecting the rights of
assignees and grantees.
Various and conflicting interpretations have been given to it by
the learned counsel, on the argument, leading to different and
opposite results, which it will be necessary to examine.
On one side, it has been strongly argued, that the legal
operation and effect of the clause save and protect all the rights
and interests of assignees and grantees in the patent existing at
the time of the extension, and thus secure and continue the
exclusive use and enjoyment of these rights and interests for the
seven years, to the same extent, and in as ample a manner, as held
and enjoyed under the first term. That if A. holds an assignment of
a moiety of the patent, he will hold the same for the new term of
seven years; if of the whole patent, then the whole interest for
that period. And that as soon as the new grant is made to the
patentee, the interest therein passes by operation of this clause
to the assignees of the old term in proportion to their respective
shares.
On the other side it has been argued with equal earnestness
that, according to the true construction and legal effect of the
clause, protection is given, and intended to be given, only to the
rights and interests of assignees and grantees acquired and held by
assignments and grants from the patentee in and under the second or
new term, and that it does not refer to or embrace or in any way
affect the rights and interests of assignees or grantees holding
under the old.
In connection with this view it is said that the rights thus
protected in the new term may be acquired by means of the legal
operation of the clause, either from a direct assignment or grant
after the extension of the patent or by an appropriate provision
for that purpose, looking to an extension, contained in the
assignment or grant under the old.
It is not to be denied but that, upon any view that has been
taken or that may be taken of the clause, its true meaning and
legal effect cannot be asserted with entire confidence, and after
all must depend upon such construction as the court can best give
to doubtful phraseology and obscure legislation, having a due
regard to the great object and intent of Congress as collected from
the context and general provisions and policy of the patent
law.
The rule is familiar and well settled that in case of obscure
and doubtful words or phraseology, the intention of the lawmakers
is to be resorted to, if discoverable from the context, in order to
fix and control their meaning so as to reconcile it, if possible,
with the general policy of the law.
Page 45 U. S. 678
Now the serious difficulty in the way, and which renders the
first interpretation inadmissible, except upon the most explicit
and positive words, is that it subverts at once the whole object
and purpose of the enactment, as is plainly written in every line
of the previous part of the section. It gives to the assignees and
grantees of the patent, as far as assigned under the old term, the
exclusive right and enjoyment of the invention -- the monopoly --
in the extended term for the seven years; when, by the same
provision, it clearly appears that it was intended to be secured to
the patentee as an additional remuneration for his time, ingenuity,
and expense in bringing out the discovery, and in introducing it
into public use. It gives this remuneration to parties that have no
peculiar claims upon the government or the public, and takes it
from those who confessedly have.
The whole structure of the eighteenth section turns upon the
idea of affording this additional protection and compensation to
the patentee, and to the patentee alone, and hence the reason for
instituting the inquiry before the grant of the extension, to
ascertain whether or not he has failed to realize a reasonable
remuneration from the sale and use of the discovery -- the
production of an account of profit and loss to enable the board to
determine the question; and as it comes to the one or the other
conclusion, to grant the extended term or not.
It is obvious, therefore, that Congress had not at all in view
protection to assignees. That their condition on account of dealing
in the subject of the invention, whether successful or otherwise,
was not in the mind of that body, nor can any good reason be given
why it should have been.
They had purchased portions of the interest in the invention,
and dealt with the patent rights as a matter of business and
speculation, and stood in no different relation to the government
or the public, than other citizens engaged in the common affairs of
life.
Nothing short of the most fixed and positive terms of a statute
could justify an interpretation so repugnant to the whole scope and
policy of it and to wise and judicious legislation.
We think this construction not necessarily required by the
language of the clause, and is altogether inadmissible.
Then as to the second interpretation, namely that the clause
refers to, and includes, assignees and grantees of interests
acquired in the new term, either by an assignment or grant from the
patentee after the extension or by virtue of a proper clause for
that purpose in the assignment under the old term.
The difficulty attending this construction lies in the
uselessness of the clause upon the hypothesis -- the failure to
discover any subject matter upon which to give reasonable operation
and effect to it -- and hence, to adopt the construction is to make
the clause
Page 45 U. S. 679
virtually a dead letter, the grounds for which conclusion we
will proceed to state.
The eleventh section of the patent act provides that every
patent shall be assignable, in law, either as to the whole
interest, or any undivided part thereof, by an instrument in
writing; which assignment, and also every grant and conveyance of
the exclusive right under any patent, &c., shall be recorded in
the Patent Office. And the fourteenth section authorizes suits to
be brought in the name of the assignee or grantee, for an
infringement of his rights, in a court of law.
One object of these provisions found in the general patent
system is to separate the interest of the assignee and grantee from
that which may be held by the patentee, and to make each fractional
interest held under the patent distinct and separate -- in other
words, to change a mere equitable into a legal title and interest,
so that it may be dealt with in a court of law.
Now in view of these provisions, it is difficult to perceive the
materiality of the clause in question, as it respects the rights of
assignees and grantees held by an assignment or grant in and under
the new term, any more than in respect to like rights and interests
in and under the old.
The eleventh and fourteenth sections embrace every assignment or
grant of a part or the whole of the interest in the invention, and
enable these parties to deal with it, in all respects, the same as
the patentee. They stand upon the same footing, under the new term,
as in the case of former assignments under the old. Nothing can be
clearer. It is impossible to satisfy the clause by referring it to
these assignments and grants, or to see how Congress could, for a
moment, have imagined that there would be any necessity for the
clause, in this aspect of it. It would have been as clear a work of
supererogation as can be stated.
The only color for the argument in favor of the necessity of
this clause, in the aspect in which we are viewing it, is as
respects the contingent interest in the new term, derived from a
provision in an assignment under the old one, looking to the
extension. As the right necessarily rested on contract, at least
till the contingency occurred, there may be some doubt whether,
even after its occurrence, the eleventh and fourteenth sections had
the effect to change it into a vested legal interest, so that it
could be dealt with at law, and that a new assignment or grant from
the patentee would be required, which could be enforced only in a
court of equity. To this extent there may be some color for the
argument -- some supposed matter to give operation and effect to
the clause.
But what is the amount of it? Not that the clause creates or
secures this contingent interest in the new term, for that depends
upon the contract between the parties, and the contract alone, and
which, even if the general provisions of the law respecting
Page 45 U. S. 680
the rights of assignees and grantees could not have the effect
to change into a legal right, might be enforced in a court of
equity.
The only effect, therefore, of the provision in respect to
assignees and grantees of this description would be to change the
nature of the contingent interest after the event happened from a
right resting in contract to a vested legal interest, or, to speak
with more precision, to remove a doubt about the nature of the
interest in the new term after the happening of a certain
contingency, which event in itself was quite remote. This seems to
be the whole amount of the effect that even ingenious and able
counsel have succeeded in finding, to satisfy the clause. It
presupposes that Congress looked to this scintilla of interest in
the new term, which might or might not occur, and cast about to
provide for it, for fear of doubts as to its true nature and legal
character, and the effect of the general system upon it.
We cannot but think a court should hesitate before giving a
construction to the clause so deeply harsh and unjust in its
consequences, both as it respects the public and individual rights
and interests, upon so narrow a foundation.
But there are other difficulties in the way of this
construction.
The eleventh section, regulating the rights of assignees and
grantees, provides, "that every patent shall be assignable at law,"
&c.,
"which assignment, and also every grant and conveyance of the
exclusive right under any patent to make and use, and to grant to
others to make and use, the thing patented within and throughout
any specified part or portion of the United States,"
&c., "shall be recorded."
Now it will be apparent, we think, from a very slight
examination of the clause in question that it does not embrace
assignees or grantees, in the sense of the eleventh section, at
all, nor in the sense in which they are referred to when speaking
of these interests generally under the patent law, without
interpolating words or giving a very forced construction to those
composing it.
The clause is as follows:
"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 interests therein."
It will be seen that the word "exclusive," used to qualify the
right of a grantee in the eleventh section, and indeed always when
referred to in the patent law (§ 14), and also the words "to make,"
"and to grant to others to make and use," are dropped, so that
there is not only no exclusive right in the grantee, in terms,
granted or secured by the clause, but no right at all -- no right
whatever -- to make or to grant to others to make and use the thing
patented; in other words, no exclusive right to make or vend. And
it is, we think, quite obvious from the connection and phraseology
that assignees and grantees are placed, and were intended to be
placed, in this respect upon the same footing. We should scarcely
be
Page 45 U. S. 681
justified in giving to this term a more enlarged meaning as to
the right to make and sell, as it respects the one class, than is
given to the others, as they are always used as correlative in the
patent laws, to the extent of the interests held by them. The
clause, therefore, in terms seems to limit studiously the benefit
or reservation, or whatever it may be called, under or from the new
grant to the naked right to use the thing patented; not an
exclusive right even for that, which might denote monopoly, nor any
right at all, much less exclusive, to make and vend. That seems to
have been guardedly omitted. We do not forget the remaining part of
the sentence, "to the extent of their respective interests
therein," which is relied on to help out the difficulty. But we see
nothing in the phrase, giving full effect to it, necessarily
inconsistent with the plain meaning of the previous words. The
exact idea intended to be expressed may be open to observation, but
we think it far from justifying the court in holding that the grant
or reservation of a right to use a thing patented, well known and
in general use at the time, means an exclusive right to make and
use it; and not only this, but an exclusive right to grant to
others the right to make and use it, meaning an exclusive right to
vend it.
The court is asked to build up a complete monopoly in the hands
of assignees and grantees in the thing patented, by judicial
construction, founded upon the grant of a simple right to use it to
the extent of the interest possessed, for the argument comes to
this complexion. A simple right to use is given, and we are asked
to read it an exclusive right, and not only to read it an exclusive
right to use, but an exclusive right to make and vend, the patented
article.
Recurring to the patent law, it will be seen that Congress, in
granting monopolies of this description, have deemed it necessary
to use very different language. The grant in the patent must be in
express terms, for "the full and exclusive right and liberty of
making, using, and vending," in order to confer exclusive
privileges. The same language is also used in the act when speaking
of portions of the monopoly in the hands of assignees and grantees.
§§ 11, 14.
We cannot but think, therefore, if Congress had intended to
confer a monopoly in the patented article upon the assignees and
grantees by the clause in question, the usual formula in all such
grants would have been observed, and that we should be defeating
their understanding and intent, as well as doing violence to the
language, to sanction or uphold rights and privileges of such
magnitude by the mere force of judicial construction.
We conclude, therefore, that the clause has no reference to the
rights or interest of assignees and grantees under the new and
extended term, upon the ground:
1. Because, in that view, giving to the words the widest
construction,
Page 45 U. S. 682
there is nothing to satisfy the clause, or upon which any
substantial effect and operation can be given to it; it becomes
virtually a dead letter, and work of legislative superfluity,
and
2. Because the clause in question, upon a true and reasonable
interpretation, does not operate to vest the assignees and grantees
named therein with any exclusive privileges whatever, in the
extended term, and therefore cannot be construed as relating to or
embracing such interests in the sense of the law.
The extension of the patent under the eighteenth section is a
new grant of the exclusive right or monopoly in the subject of the
invention for the seven years. All the rights of assignees or
grantees, whether in a share of the patent, or to a specified
portion of the territory held under it, terminate at the end of the
fourteen years, and become reinvested in the patentee by the new
grant.
From that date he is again possessed of "the full and exclusive
right and liberty of making, using, and vending to others the
invention," whatever it may be. Not only portions of the monopoly
held by assignees and grantees as subjects of trade and commerce,
but the patented articles or machines throughout the country,
purchased for practical use in the business affairs of life, are
embraced within the operation of the extension. This latter class
of assignees and grantees are reached by the new grant of the
exclusive right to use the thing patented. Purchasers of the
machines, and who were in the use of them at the time, are disabled
from further use immediately, as that right became vested
exclusively in the patentee. Making and vending the invention are
prohibited by the corresponding terms of his grant.
Now if we read the clause in question with reference to this
state of things, we think that much of the difficulty attending it
will disappear. By the previous part of the section, the patentee
would become reinvested with the exclusive right to make, use, and
vend the thing patented, and the clause in question follows, and
was so intended as a qualification. To what extent, is the
question. The language is,
"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 interests therein,"
naturally, we think, pointing to those who were in the use of
the patented article at the time of the renewal and intended to
restore or save to them that right which, without the clause, would
have been vested again exclusively in the patentee. The previous
part of the section operating in terms to vest him with the
exclusive right to use, as well as to make and vend, there is
nothing very remarkable in the words, the legislature intending
thereby to qualify the right in respect to a certain class only,
leaving the right as to all others in the patentee, in speaking of
the benefit of the renewal extending to this class. The renewal
vested him with the whole right to use, and therefore there is no
great impropriety of language if intended to protect
Page 45 U. S. 683
this class, by giving them in terms the benefit of the renewal.
Against this view it may be said that "the thing patented" means
the invention or discovery, as held in
McClurg v.
Kingsland, 1 How. 202, and that the right to use
the "thing patented" is what, in terms, is provided for in the
clause. That is admitted, but the words, as used in the connection
here found, with the right simply to use the thing patented, not
the exclusive right, which would be a monopoly, necessarily refer
to the patented machine and not to the invention, and indeed it is
in that sense that the expression is to be understood generally
throughout the patent law when taken in connection with the right
to use, in contradistinction to the right to make and sell.
The "thing patented" is the invention, so the machine is the
thing patented, and to use the machine is to use the invention,
because it is the thing invented and in respect to which the
exclusive right is secured, as is also held in
McClurg v.
Kingsland. The patented machine is frequently used as
equivalent for the "thing patented," as well as for the invention
or discovery, and no doubt, when found in connection with the
exclusive right to make and vend, always means the right of
property in the invention, the monopoly. But when in connection
with the simple right to use, the exclusive right to make and vend
being in another, the right to use the thing patented necessarily
results in a right to use the machine and nothing more. Then as to
the phrase "to the extent of their respective interests therein,"
that obviously enough refers to their interests in the thing
patented, and in connection with the right simply to use, means
their interests in the patented machines, be that interest in one
or more at the time of the extension.
This view of the clause, which brings it down in practical
effect and operation to the persons in the use of the patented
machine or machines at the time of the new grant, is strengthened
by the clause immediately following, which is "that no extension of
the patent shall be granted after the expiration of the term for
which it was originally issued." What is the object of this
provision? Obviously to guard against the injustice which might
otherwise occur to a person who had gone to the expense of
procuring the patented article, or changed his business upon the
faith of using or dealing with it after the monopoly had expired,
which would be arrested by the operation of the new grant. To avoid
this consequence, it is provided that the extension must take place
before the expiration of the patent if at all. Now it would be
somewhat remarkable if Congress should have been thus careful of a
class of persons who had merely gone to the expense of providing
themselves with the patented article for use or as a matter of
trade, after the monopoly had ceased, and would be disappointed and
exposed to loss if it was again renewed, and at the same time had
overlooked the class who in addition to this expense and change of
business
Page 45 U. S. 684
had bought the right from the patentee, and were in the use and
enjoyment of the machine, or whatever it might be, at the time of
the renewal. These provisions are in juxtaposition, and we think
are but parts of the same policy, looking to the protection of
individual citizens from any special wrong and injustice on account
of the operation of the new grant.
The consequences of any different construction than the one
proposed to be given are always to be regarded by courts when
dealing with a statute of doubtful meaning. For between two
different interpretations, resting upon judicial expositions of
ambiguous and involved phraseology, that which will result in what
may be regarded as coming nearest to the intention of the
legislature should be preferred.
We must remember too that we are not dealing with the decision
of the particular case before us, though that is involved in the
inquiry, but with a general system of great practical interest to
the country, and it is the effect of our decision upon the
operation of the system that gives to it its chief importance.
The eighteenth section authorizes the renewal of patents in all
cases where the Board of Commissioners is satisfied of the
usefulness of the invention and of the inadequacy of remuneration
to the patentee. Inventions of merit only are the subject of the
new grant, such as have had the public confidence and which it may
be presumed have entered largely, in one way and another, into the
business affairs of life.
By the report of the Commissioner of Patents, it appears that
five hundred and two patents were issued in the year 1844 -- for
the last fourteen years, the average issue yearly exceeded this
number -- and embrace articles to be found in common use in every
department of labor or art, on the farm, in the workshop, and
factory. These articles have been purchased from the patentee and
have gone into common use. But if the construction against which we
have been contending should prevail, the moment the patent of
either article is renewed, the common use is arrested, by the
exclusive grant to the patentee. It is true the owner may
repurchase the right to use, and doubtless would be compelled from
necessity, but he is left to the discretion or caprice of the
patentee. A construction leading to such consequences, and fraught
with such unmixed evil, we must be satisfied was never contemplated
by Congress, and should not be adopted unless compelled by the most
express and positive language of the statute.
The third question certified is whether the extension of the
patent granted to W. W. Woodworth, as administrator, on 16
November, 1842, inured to the benefit of the administrator
exclusively, or whether, as to certain territory specified in the
contract of assignment made by W. Woodworth and James Strong to
Toogood, Halstead, and Tyack, on 28 November, 1829, and
Page 45 U. S. 685
by legal operation of the covenants contained in said contract,
the said extension inured to the benefit of said Toogood, Halstead,
and Tyack, or their assigns?
William Woodworth was the original patentee, and took out
letters patent on 27 December, 1828, and soon after conveyed a
moiety of the same to James Strong. One Uri Emmons also obtained a
patent for a similar machine on 25 April, 1829, and soon after
conveyed all his interest in the same to Toogood, Halstead, and
Tyack. With a view to avoid litigation, both parties mutually
assigned to each other their interests in the respective patents to
different and separate portions of the United States, and in the
assignment from Woodworth and Strong to Toogood, Halstead, and
Tyack, the following covenant was entered into by the parties.
"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 herein before
designated."
At the time this covenant was entered into, there was no
provision in the patent laws authorizing an extension or renewal of
the same beyond the original term of fourteen years. The first act
providing for it was passed in July, 1832. Before this time, the
only mode of prolonging the term beyond the original grant was by
means of private acts of Congress upon individual applications.
A construction had been given by the circuit court of the United
States, in New York, as early as 1824, by which the patentee, on
surrendering his patent on account of a defective specification,
would be entitled to take out a new patent correcting the defect,
which construction was afterwards upheld by this Court in
Grant v.
Raymond, 6 Pet. 218, and the principle since
engrafted into the patent law by the act of 1832.
The Court is of the opinion, that the covenant in question
should be construed as having been entered into by the parties,
with a reference to the known and existing rights and privileges
secured to patentees under the general system of the government
established for that purpose; that the parties would naturally look
to the established system of law on the subject in arranging their
several rights and obligations, in dealing with property of this
description, rather than to any possible change that might be
effected by private acts of Congress upon individual application.
Contracts are usually made with reference to the established law of
the land, and should be so understood and construed, unless
otherwise clearly indicated by the terms of the agreement. If the
parties in this case contemplated any alteration or modification of
their rights, more advantageous, by the further legislation of
Congress, we think some more specific provision having reference to
it should have been
Page 45 U. S. 686
inserted in their covenant. The term renewal may be satisfied by
a reference to the law as it then stood. The patentee might
surrender his patent, and take out a new one, within the fourteen
years, and the term was used, probably, to guard against any
question that might be raised as to the right under the assignment
in the new patent, if a surrender and new issue should become
necessary. The specification accompanying the patent was a
complicated one, and has been the subject of much controversy, and
the necessity of a surrender for correction and amendment might
very well have been anticipated.
We think this view satisfies the use of the term, and that no
right is acquired in the new grant by virtue of the assignment or
covenant.
The fourth and fifth questions certified are answered by the
opinion of the court upon the first and second questions.
The sixth question certified is as follows: 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 the 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.
The plaintiff is the grantee of the exclusive right to construct
and use, and to vend to others to be used, two of the patented
machines within the town of Watervliet, in the County of
Albany.
The fourteenth section of the patent law authorizes any person,
who is a grantee of the exclusive right in a patent within and
throughout a specified portion of the United States, to maintain an
action in his own name for an infringement of the right.
The plaintiff comes within the very terms of the section.
Although limited to the use of two machines within the town, the
right to use them is exclusive. No other party, not even the
patentee, can use a right under the patent within the territory
without infringing the grant.
The seventh question certified is as follows: whether the
letters patent of renewal issued to W. W. Woodworth, as
administrator, 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.
The Court is satisfied, upon an examination of the specification
and drawings referred to in the question certified, that it is
sufficiently full and explicit, and is not subject to any of the
objections taken to it.
The remaining questions will be sufficiently answered by the
certificate sent to the court below.
Page 45 U. S. 687
Order
This cause came on to be heard on the transcript of the record
from the Circuit Court of the United States for the Northern
District of New York, and on the points and questions on which the
judges of the said circuit court were opposed in opinion, and which
were certified to this Court for its opinion, agreeably to the act
of Congress in such case made and provided, and was argued by
counsel. On consideration whereof, it is the opinion of this
Court:
1. That the eighteenth section of the patent act of 1836 did
authorize the extension of a patent on the application of the
executor or administrator of a deceased patentee.
2. That 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, did not inure to
the benefit of assignees under the original patent granted to
William Woodworth on 27 December, 1828, but that the said extension
inured to the benefit of the administrator, only, in his said
capacity.
3. That the extension specified in the foregoing second point
did inure to the benefit of the administrator, to whom the same was
granted, and to him in that capacity exclusively, and that, 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 did not inure to the benefit of the said Toogood,
Halstead, and Tyack, or their assigns.
4. That 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. And that the said assignment is
not, of itself, a perfect bar to the plaintiff's suit.
5. That the extension specified in the second point could be
applied for and obtained by William W. Woodworth, as administrator
of William Woodworth, deceased, although 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; and that such sale did not carry anything beyond the term
of said original patent, and that no contingent rights remained in
the patentee or his representatives.
6. That the plaintiff, if he be an assignee of an exclusive
right
Page 45 U. S. 688
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.
7. That the letters patent of renewal issued to William W.
Woodworth, as administrator as aforesaid, on 8 July, 1845, upon the
amended specification and explanatory drawings then filed, are good
and valid in law, and are not void for uncertainty, ambiguity, or
multiplicity of claim, or any other cause.
8. That the question involved in the eighth point propounded
does not present any question of law which this Court can
answer.
9. That 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 not conclusive upon
the question of their jurisdiction to act in a given case.
10. That 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; and
that such surrender and renewal may be made at any time during such
extended term.
It is thereupon now here ordered and adjudged by this Court,
that it be so certified to the said circuit court.
MR. JUSTICE McLEAN.
As I dissent from the opinion of the Court in its answer to the
second question certified, I will state in few words the reasons of
my dissent.
The question is whether the extension of the patent, under the
act of 1836, to William W. Woodworth, the administrator, inured to
the benefit of the assignees of the first patent.
I had occasion to consider this question in the case of
Brooks and Morris v. Bicknell and Jenkins, on my circuit,
and on a deliberate examination of the eighteenth section of the
above act, I came to the conclusion that unless the assignment gave
to the assignee the right in the extended or renewed patent, his
interest expired with the limitation of the original patent.
The lamented Justice Story, without any interchange of opinion
between us, about the same time, gave the same construction to the
section. The late Mr. Justice Thompson and several of the district
judges of the United States have construed the act in the same
way.
The eleventh section of the act makes the patent assignable in
law, either as to the whole interest or any undivided part thereof,
by any instrument of writing, which is required to be recorded in
the Patent Office within three months from the date.
By the eighteenth section, the patentee may make application
Page 45 U. S. 689
or the extension of his patent to the Commissioner, who is
required to publish a notice of such application
"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. . . . 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 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 the 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 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, it
shall be the duty of the Commissioner to renew and extend the
patent, . . . 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."
This section embraces patents previously issued, and the
construction now to be given to it operates on all cases of
extensions under it, whether the assignments were made before or
after the passage of the act.
The object of this section is so clearly expressed as not to
admit of doubt. It was for the exclusive benefit of the patentee;
for the extension can only be granted when it shall be made to
appear that the patentee,
"without neglect or fault on his part, having failed to obtain,
from the use and sale of his invention, a reasonable remuneration
for his time, ingenuity, and expense,"
&c. This, then, being the clear intent of Congress,
expressed in this section, it must have a controlling influence in
the construction of other parts of the section. A statute is
construed by the same rule as a written contract. The intent of
lawmakers, and of the persons contracting, where that intent
clearly appears, must be carried into effect. Where the statute or
the contract is so repugnant in its language as not to show the
intent, then no effect can be given to it. If the words used be
susceptible of such a construction as
Page 45 U. S. 690
not only to show the intent, but to enable the court to give
effect to it, it is the duty of the court so to construe it.
Bacon, on the construction of statutes, says
"The most natural and genuine way of construing a statute is to
construe one part by another part of the same statute, for this
best expresseth the meaning of the makers."
And
"If any part of a statute be obscure, it is proper to consider
the other parts, for the words and meaning of one part of a statute
frequently lead to the sense of another. . . . A statute ought,
upon the whole, to be so construed that if it can be prevented, no
clause, sentence, or word shall be superfluous, void, or
insignificant."
That the patentee may have his patent extended, though the
assignee held the entire interest in it, is undoubted. He has only
to show that he has not been reimbursed &c., within the meaning
of the section, to establish his claim for an extension. And, in
such a case, if the benefit of the extension go to the assignee, he
having the entire interest in the patent, how is the patentee
benefited? And yet the law was enacted exclusively for his benefit.
Does not such a construction defeat the object of the law? And if
it does, can it be maintained? Where the assignment of the patent
has been for less than the whole, the same objection lies, though
the object of the law is subverted only to the extent of the
assignment.
The interest of the assignee, it is supposed, is protected by
the provision, that
"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."
There can be no doubt that the words, "to the extent of their
respective interest therein," refer to their right to use the thing
patented, and this, it is contended, is the benefit which results
to the assignee from the renewal. That this would seem to be the
import of these words, disconnected from other parts of the
section, is admitted; but such a construction is wholly
inadmissible, when the object of the section is considered.
The patent is extended for the benefit of the patentee. This is
so obvious that no one will deny it. And the above construction
gives the benefit to the assignee. Here is a direct repugnancy, and
there is no escape from it, for the same repugnancy exists, though
in a less degree, where a part of the patent only has been
assigned. Under such circumstances, we must inquire whether this
repugnancy may not be avoided by giving another and a different
application to the provision, of which the words may be
susceptible.
The benefit of the renewal is given to the assignees, but to
what extent? -- to the extent of their interest in the renewal. But
it is said, that this cannot be the true construction, as it
renders the provision inoperative. If, by the assignment, there was
an express
Page 45 U. S. 691
contract that the assignee should enjoy the same interest in the
renewal or extension of a patent, this would secure such interest,
without the provision.
To this it may be answered, that such an assignment of a thing
not
in esse would, at most, only be a contract to convey
the legal right. But, under the eighteenth section, the assignment
after the extension becomes a legal transfer. In addition to this,
the right under the extension being legal, all purchasers would be
affected with notice, where the assignment had been recorded in the
Patent Office. This view gives effect to the section, and
harmonizes its provisions. The other construction makes the parts
of the section repugnant, and nullifies the whole of it. Now which
is the more reasonable view? But in addition to this, what
conceivable motive could Congress have had to give a boon to the
assignee? How is he injured by the extension?
Without the extension, the assignee would only have a right, in
common with all others, to use the invention. This could be of no
more value to him than the worth of his machinery; for competition
equally open to all cannot be estimated of any value. Under the
assignment, the assignee claims a monopoly. Now did Congress intend
to give him this boon? Why should he be an object of public
munificence? He laid out his money in the purchase of the patent
right, because he believed it would be profitable. And, in most
cases, the assignee speculates upon the poverty of the inventor.
Inventors are proverbially poor and dependent. The history of this
patent illustrates strongly this fact. Half of the right was
originally assigned to pay the expense and trouble of taking out
the patent. Another part of the patent was assigned to compromise a
pretended claim to a similar invention.
The hardship complained of by the assignee is more imaginary
than real. If the patentee takes all the benefit of the extension,
the assignee loses, it is said, the value of his machinery. This
does not necessarily follow. For if the machinery has been
judiciously selected, and put in operation at a proper place, it
will sell for its value generally, if not always. If the invention
be of great value, as is undoubtedly the case in this instance, the
machinery will be wanted by anyone who may wish to continue the
business, under the extended patent. So that the loss in the sale
of the machinery would not be greater than would have been suffered
by a sale if the patent had not been extended.
This construction, then, inflicts little or no injury on the
assignee, whilst the other construction, as has been shown, defeats
the object of the statute. But this inconvenience or loss to the
assignee is duly considered and weighed, under the statute, as the
board, in granting the extension, must have a due regard to the
public interest. Notice is to be given, as far as practicable, to
all persons interested against the extension of the patent, who
may
Page 45 U. S. 692
appear before the board and oppose it. And it was stated in the
argument, that the assignees of this patent did oppose the
extension of it. Little did they suppose at the time that they were
resisting a boon secured to them by the above section. Whatever
loss, real or imaginary, the assignee may suffer from the extension
of the patent, is a loss or inconvenience which results from the
general advancement of the public good, and for which society does
not, and indeed cannot, make compensation. The price of property is
affected by general legislation. An embargo is laid, and ships,
during its continuance, are valueless. The increase or diminution
of the tariff affects beneficially or injuriously the value of
machinery used in manufactures. The reduction of the price of the
public lands affects the price of lands generally in the new
states. An act authorizing a company or individual to construct a
railroad renders useless turnpike roads in its neighborhood, and
the public houses established thereon, but for these injuries no
compensation is made. Indeed, it is difficult to find any great
public enterprise which does not, in a greater or less degree,
affect injuriously private rights. But these must yield to the
general welfare of society.
All enlightened governments reward the inventor. He is justly
considered a public benefactor. Many of the most splendid
productions of genius, in literature and in the arts, have been
conceived and elaborated in a garret or hovel. Such results not
only enrich a nation, but render it illustrious. And should not
their authors be cherished and rewarded?
If the assignee under the eighteenth section take anything, in
my judgment he takes the whole extent of his interest -- the whole
or nothing. And it appears to me the construction given by the
court is, if possible, less warranted by the section, than to hold
that the assignee takes under the extension the entire interest
assigned.
The words
"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"
cannot, it seems to me, by any known rule of construction be
held to give to the assignee or grantee the right to use the
machine he may have had in operation at the time the extension took
effect. The words "to use the thing patented" are descriptive of
the right assigned or granted, and refer to such right, not to the
mere use of the machine. "The extent of their respective interest
therein" undoubtedly covers the whole interest, and cannot refer
merely to the number of machines the individual may have in
operation.
MR. JUSTICE WAYNE expressed his dissent from that part of the
opinion of the Court which, in answer to the second question, gave
a right to an assignee to continue the use of the patented
Page 45 U. S. 693
machine, and said he would probably file his reasons with the
clerk.
MR. JUSTICE WOODBURY.
There is one of the leading questions certified to us in this
cause in the decision of which I have the misfortune to differ from
a majority of the Court.
As that decision bears on several of the other questions and
also disposes entirely of some of the four causes connected with
this matter which have been so long and so ably under argument
before us, I consider it due to the importance of this subject to
the parties and the public, as well as just to myself, to state the
reasons for my dissent.
The difference in our views arises in the construction of the
eighteenth section of the patent law of July 4, 1836, and relates
to the benefits which may be enjoyed under it by assignees and
grantees.
Before the passage of that law, a patent could not under any
circumstances be extended in its operation for the benefit of any
body beyond its original term except by a special act of Congress.
But this section allowed a patentee to apply to a board of officers
and obtain from them a renewal of his patent for seven years
longer, provided he offered to them satisfactory proofs that his
expenses and labor in relation to the patent had not been
indemnified. It provided further that the renewal be endorsed on
the back of the original patent, "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." It then added,
"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 interests therein."
This last clause creates the chief embarrassment. In this case,
the patentee having died and we having just decided that a renewal
was legally granted to his administrator, the controverted question
about which we differ is whether that renewal inures exclusively to
the use of the patentee through his administrator, or goes either
in full or in part to his assignees and grantees under the old
patent. In the present case it is conceded that by the contract of
assignment or grant nothing is expressly conveyed but the old
patent, and in words, only for the original term of "fourteen
years."
The question is not, then, whether, when assigning an interest
in the old term, before or after the passage of the act of 1836, it
might not be competent and easy to use language broad and explicit
enough to transfer an interest in any subsequent extension by means
of the contract of assignment, and this be confirmed by the words
of the eighteenth section, but whether those words alone transfer
it, or were intended to transfer it, when the contract of
assignment,
Page 45 U. S. 694
as in this case, was made before the act of 1836 passed, and
referred,
eo nomine, only to the old patent, and expressly
limited the time for which the patent was assigned to the old
term.
In such case, it seems to me that both the language and spirit
of this section restrain its operation to the patentee or his legal
representatives, and convey no rights in the extension to assignees
or grantees, whether prior or subsequent, except where the patentee
had clearly contracted that they should have an interest beyond the
original term.
But the majority of the court hold here, that this clause,
independent of any expression in the assignment, transfers an
interest in the extension to all assignees and grantees, so that
they may continue to use any machines already in operation during
the new term, without any new contract, or any new compensation for
such farther use.
The argument on the part of the assignees in all the cases
before us on this subject has been that by force of this section
all assignees before authorized to make, vend, or use these
machines, for fourteen years, could continue to make and vend, as
well as use them, for seven more, without any new contract or new
consideration, and that "grantees of the right to use" should have
a like prolongation of all their interests. And such seems to have
been the opinion of the circuit court in Maryland in
Wilson v.
Turner, October term, 1844, CHIEF JUSTICE TANEY presiding,
though other points besides arose there, and were disposed of in
that opinion.
But now, for the first time, it is believed, since the passage
of the patent law, this Court, by force of the last clause in the
eighteenth section, not only give to assignees and grantees a
greater or longer interest in the thing patented than was given in
the contract of assignment to them, but undertake to introduce a
novel discrimination, not seeming to me to be made in the clause
itself, and give to assignees of the patent right itself an
extension of only a part of their former interest, but to "grantees
of the right to use" the patent, an extension of all their former
interests.
We propose to examine the objections to this decision of the
court, first, on the principle of giving to old assignees and
grantees an extension of their interests to the new patent at all,
unless the contract of assignment to them was manifestly meant to
embrace any new term, and after that to examine the propriety of
the discrimination in allowing a right in the renewed patent to
grantees of the use, to the extent of all their old interests, and
withholding a like privilege from assignees of the patent
itself.
First, it has been repeatedly decided, that "a thing which is in
the
letter of a statute is not within the statute, unless
it be within the intention of the makers." Dwarris on statutes 692;
Bac.Abr.
Statute, T; 2 Instit. 107, 386.
Page 45 U. S. 695
Here, the great design of the whole section was to extend
assistance to an unfortunate and needy class of men of genius, who
had failed to realize any profits from their valuable inventions
during the first term of their patents. The intention of the makers
of this law is usually conceded to have been relief to such
patentees, and not to assignees or grantees.
It was the former, and not the latter, who were sufferers, and
whom Congress had before, by special acts of extension,
occasionally tried to indemnify for their losses, and to whom now,
in a more summary way, on application and proof by them alone, an
extension was authorized to be given by a board of officers, in
order that they and not others might reap the profits of such
extension.
But, by allowing the benefit of it to go to the former assignees
of only the old patent, the intention of the makers appears to be
defeated, and those profited who have not proved any loss or
suffering, but, on the contrary, may have already derived great
advantages from the assignment.
It might thus happen, likewise, where, in a case like this, the
patentee has assigned all his old patent before the extension, and
the use of it under the extension would constitute all or its chief
value, that neither he nor his representatives -- he whose genius
had produced the whole invention, at the sacrifice of time and
toil, and whose sufferings, losses, and disappointments the law is
expressly made to indemnify -- would receive the smallest pittance
from it; but those reap all its advantages who may already have
grown rich by the assignment to them of the old patent, and who
nobody can pretend were the particular or principal objects of
relief. Under such a construction, how absurd would it be for such
a patentee ever to apply for an extension, when he must do it at
new cost and expense, and then have the whole fruits of it stripped
from him by persons who had neither paid for the extension, nor had
it conveyed to them. It is an equal violation of the leading
intention of this section, and of most of these principles and of
much of this reasoning, to allow, as the opinion of the court does,
such persons to take, unpaid for and unbought, a part of the
benefits of the renewal, as to take the whole of them.
Secondly, by the construction of the court, contracts and vested
rights seem to be radically encroached upon. Under it, an assignee
of an old patent, limited in the contract conveying it to fourteen
years, will, for some purposes, get it for twenty-one years,
directly in conflict with the express stipulation of the parties.
Congress will, in this way, be made unworthily to tamper with the
private obligations of individuals, and will impair them by taking
from the rights of one, and enlarging or adding to the rights of
the other, and this without any new consideration or new engagement
passing between them, but, on the contrary, against the wishes,
assent, and interests of one. That view also involves us in the
unreasonable inference
Page 45 U. S. 696
that Congress intended to violate a solemn compact to disturb
the vested rights and written agreements of parties when the
language used is susceptible of a different construction, and one
that is consistent with what is just and with the spirit of the
whole section.
By that view, an assignee or grantee will obtain "a right to use
the thing patented" for a term of seven years longer than he
contracted or paid for, while the patentee, without any such
agreement in his contract assigning or granting the right to use
and without any new consideration will be deprived of all his new
and vested rights in the extension, so far as regards that use, and
will have his former contract impaired virtually in its whole
vitality, by making him part with the use for a term of twenty-one
years when the contract says but fourteen, and making him do it
also without any application by other for the extension, any proof
by others of not being indemnified, any payment by others of the
costs and expenses for procuring the additional seven years, and
when the avowed and cardinal object of the renewal was to indemnify
him alone for losses which he and not others had sustained. Well
may he say as to these new and extended interests attempted to be
conferred on assignees and grantees beyond the contract of
assignment,
"in haec federa non veni."
Thirdly, the construction I contend for seems to me the only one
consistent with the language used in the latter portion of the
eighteenth section. By this, no part of those troublesome four
lines is senseless, or expunged, or ungrammatical, or contradictory
to the object of the previous portion of the section. While the
construction opposed to this must in my view require interpolations
or extirpations of words and a violation of the object of the rest
of the section in order to give to the clause the meaning the
advocates of that construction impute to it. Look at the
phraseology of the clause.
"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 interests therein,"
but surely to no more than that extent. It would violate both
the words and design to have them enjoy more than the extent of
their interests therein, quite as much as not to let them enjoy all
of the extent of them. In the construction of statutes it is a well
settled axiom that
"to bring a case within the statute, it should be not only
within the mischief contemplated by the legislature, but also
within the plain, intelligible import of the words of the act of
Parliament."
Brandling v. Barrington, 6 Barn. & Cressw. 475. In
this case, the assignees and grantees were not within either the
mischief intended to be remedied -- that is, a want of indemnity
for losses by the patentee -- or within the "plain, intelligible
import of the words," as their contract of assignment or grant did
not extend to the renewed term at all, for any purpose whatever,
but was expressly limited to the fourteen years of the original
patent.
There must be some measure of their respective interests
when
Page 45 U. S. 697
the act passed. What was it? Clearly the contracts under which
they had been acquired. Nothing had been done either in other acts
or previous portions of this to increase those interests beyond the
contracts, but merely to enable assignees and grantees of exclusive
rights to protect them by suits in their own names. The present
clause also does not profess to increase those interests, but
simply to let assignees and grantees enjoy them under the renewal,
if by their extent by the contract which limits and defines them
they run into the extended term. Various hypotheses and
metaphysical refinements have been resorted to for the purpose of
putting a meaning on the words of this clause differing from this,
which is so plain and so consistent with the spirit of the section,
and virtually making it provide, that assignees and grantees shall
have more benefits under the renewal in the thing patented than the
"extent of their respective interests therein."
But before testing more critically the extent of those interests
by the only standard applicable to them, it will be necessary to
consider separately the true meaning of two of the words employed
in this clause -- namely
"renewal" and
"therein."
Much research has been exhibited, in attempting to draw
distinctions in this case between the words
renewal and
extension. But I am not satisfied that any exist, when
these words are employed as in this act of Congress, or in
contracts relating to this subject. It is true, that some
"renewals" are not "extensions," in the sense of prolonging the
term of the patent -- that is, when an old patent is surrendered
and a new one taken out, or a renewal made for the rest of the term
-- while all
extensions prolong the term. But still
"renewals" are as often used for a prolongation of the term, or for
a new term, as
extensions are, and in this very section,
"to renew and extend" is used as if synonymous, and this
in sound analogy to the use of the word renewal on several other
subjects. Thus, to renew a lease is to extend it another term. To
renew an office is to extend it another term. To renew griefs,
revocare dolores is to extend them. Again, the second
"therein," at the close of the clause, has been considered
by some as meaning "in the
renewal," and by others, "in
the right to use," and by others still, "in the thing
patented." But, grammatically, it refers to the "thing patented,"
and hence "the interests therein" are "the interests in the
thing patented."
Phillips treats it as a matter of course to mean "in the
patent," and uses that as synonymous to "therein," and
though, in regard to my construction of the whole clause, the
result is much the same whether "therein" is considered to mean in
"the thing patented" or "the patent" or "the renewal," yet I
incline to the first view of it as that most strictly grammatical
and the most natural, as well as coming nearest to the views of
this Court in
Page 45 U. S. 698
M'Clurg v.
Kingsland, 1 How. 210. Further objections to its
meaning "in the right to use" will be stated hereafter, under
another head. Passing, then, to a more careful scrutiny of the
whole clause, it would seem, that there could be but one rational
test of "the extent" of the interests of assignees and grantees in
the thing patented, and that such test must be the previous
contract of assignment or grant, under which alone they hold any
interests.
If that contract grants to them one-fourth or one-half of the
old patent, or the use of it in one state or county, and for a term
of five years, or ten, or fourteen, from the issue of the patent,
then such and such alone is the extent of their interests, and they
will not run into the new term. But if the contract goes further,
and grants one-half or all of the old patent to assignees, and for
a term not only of fourteen years, but twenty-one years, or any
number to which the patentee may afterwards become entitled by any
extension or new grant, then such is the extent of their interests,
and they will in such case run into the new term. This view gives
meaning and spirit to every word, and excludes or alters none. This
too conforms to the design of the section in taking away no part of
the benefit intended to be conferred by it on the patentee, unless
he has chosen to dispose of it clearly and deliberately, and
receive therefor, either in advance or after actually granted, such
additional consideration as he deemed adequate and contracted to be
sufficient.
If after the word "extent" in this clause, there had been added,
what is the legal inference,
both in time and quantity,
this meaning might have been still more clear to some. But without
those words, the extent of interest seems to me to depend as much
on the length of time the patent is granted to the assignee, as on
the dimensions of territory over which he may use it, or the
proportion of the whole patent he is authorized to use. It is like
a leasehold interest in land, or a grant of it. The extent of
interest by such a grant of land is more or less, as the term is
shorter or longer, quite as much as if the land conveyed is more or
less in quantity.
The word "extent," in common parlance, varies somewhat in
meaning, according to the subject to which it is applied, and as
that changes, it may as well refer to time as to space, or
proportion, and more especially so, when applied to interests, as
in patents, for a particular term of years.
There is another analogy in support of this view, that has not
been urged in the ingenious arguments offered, but has struck me
with some force. A patent was the description once applied to
commissions for office, and the records of this Court at first
speak of the commissions of the judges as patents.
Now what is the extent of interest the incumbent has in any
Page 45 U. S. 699
office under his commission or patent? Clearly, in part, the
length of time it is to run, whether four years, during good
behavior, or for life, and in part only its yearly profits, often
quite as much depending on that length of time, as the amount of
the salary or fees annually attached to the office.
What is the chief objection in reply to all this? Nothing,
except that the assignee could get protected to the extent of his
interest, in this view, by the contract alone, without the aid of
the provision at the close of the eighteenth section, and hence
that the provision is in this view unnecessary or nugatory, and
must have been inserted for some other purpose. But were it in
reality unnecessary, that would not require us to consider it as
intending something different from its words, or different from the
previous contracts of the parties. Legislatures often add clauses
to acts, which do not prove to be in reality necessary, but are
inserted from abundant caution and to remove future doubts or
litigation. So in this very act, in the eleventh section, it is
declared, that a patent may be assigned. Yet this is probably
unnecessary, as an interest like that of a patentee can of course
be assigned, on common law principles, without the aid of a
statute.
When we look, however, to another circumstance -- that, though a
contract of assignment would, without any clause in the statute,
pass the interest to the assignee, yet it would not enable him to
sue in his own name -- we can discover another reason for this
provision still more effective. A clause had been inserted in a
previous part of the act to enable the assignee to sue in his own
name on the old patent, if violated, and probably in doubt whether
such provision would be extended to assignees under the renewal,
when having any interest therein, it was provided further, that
"the benefit of the renewal" should reach them to the extent of
their interests therein -- a part of which benefit would be to sue
in their own name for any infringement on their rights to it, as
fully as they could do for a violation of their rights in the
original patent, and as if that had been for twenty-one years. The
provision thus would be far from nugatory, by clearly conferring on
them every power and privilege to sue under the extension which
they possessed under the original patent.
By means of this provision, also, in another view, the condition
of the parties might be changed, from a reliance on a contract
alone that they should have a certain interest in the new patent,
to a vested interest in it, or, in another view still, from an
executory to an executed right.
There is, in the construction given by some of the majority of
the Court to the clause immediately preceding this, another ample
reason for inserting such a provision.
The previous clause, stating, that "thereupon the said patent
shall have the same effect in law as though it had been originally
granted for
Page 45 U. S. 700
the term of twenty-one years," would, it is argued, if the
section had there ended, have conferred on any assignee or grantee
of the old patent, or any part of it, the extended term, so as to
enable them to use the patent as if it originally had been granted
for twenty-one years instead of fourteen.
Suppose, then, for a moment, that this construction was
considered by Congress proper, or only possible, it is manifest
that the additional clause which follows had a second and most
pregnant object -- no less than to prevent that consequence, so
hostile to the design of inserting the whole section -- to grant an
extended term for the benefit and indemnity of the patentee, and
not of the assignee. In this view, the last clause might well be
added, as a limitation on what would otherwise be the inference
from that just preceding it; and might well declare, instead of
this inference, that assignees of the old patent should not hold
it, in all cases, as if originally granted for twenty-one years,
though patentees might, but that assignees should hold only in
conformity to "the extent of their respective interests" in the
thing patented. In other words, if by contract they had acquired
clearly an interest for twenty-one years, they should hold for that
time; but if by contract they had acquired an interest for only
five or fourteen years, they should hold it only to that extent.
This is rational, consistent with the great object of the section,
and gives new and increased force and necessity to the clause. The
assignees would then, after the renewal, hold the patent for all
the time they had stipulated, and for all they had paid, but for no
more.
It will be perceived, that very few assignees or grantees, prior
to the passage of the act of 1836, would in this view be likely to
come under this provision, and be benefited by it, because, not
knowing that any future law would pass allowing an extension, very
few would be likely to anticipate one, and provide in their
contract and pay for a contingent interest in its benefits.
This would make the provision, in practice, apply chiefly to
future assignees, who, knowing that such a provision existed, might
be willing to give something for a right to any extension which
might ever take place under it, and therefore might expressly
stipulate in the assignment for that right. Indeed, the arguments
on the part of the patentee in this case have mostly proceeded on
the ground that this provision was intended to apply solely and
exclusively to future assignees. Considering that any other
construction is in some degree retrospective, and that this would
give force to the provision, as well as preserve the spirit of the
section, I should be inclined to adopt it, if mine did not produce
a like effect, and was not alike free from objection, as limited by
me, because I do not make the provision retrospective except in
cases where the parties had expressly contracted that the prior
assignee should receive the benefit of any extension, and in that
case it has the preference in its operation
Page 45 U. S. 701
over the other view, as it carries into effect that express
compact, and does not cramp the force of it to the future alone,
where the language and the consideration are equally applicable to
past engagements of this character.
This conclusion is also strengthened by being in harmony with
all the leading rules of construction applicable to statutes, while
that adopted by the court seems, to my mind, to violate some of the
most important of them.
Beside those already referred to, it is well settled, that
"if a particular thing be given or limited in the preceding
parts of a statute, this shall not be taken away or altered by any
subsequent general words of the same statute."
Dwarris 658;
Standen v. University of Oxford, 1 Jones
26; 8 Coke 118
b. Here a particular benefit is, by the
former part of the eighteenth section, conferred on a patentee, for
reasons applicable to him alone; and yet, in this case, by the
opposite construction, a few general words towards the close are
construed so as in some respects to destroy entirely all those
benefits to the patentee; and that, too, when the language is
susceptible of a different construction, more natural and perfectly
consistent with the previous particular grant to the patentee.
Some collateral considerations have been urged in support of the
conclusions of the court on this branch of the construction, which
deserve notice. On a close scrutiny, they appear to me to amount to
less in any respect than is supposed, and in some particulars
strengthen the grounds of dissent. Thus it has been said that the
English act of the 5th and 6th of William the Fourth, passed
September 18, 1835, was before Congress in 1836, and was intended
to be copied or adopted; and as, under that, assignees have been
allowed to participate in the extended time, it has been argued
that such was the intention here. But it is doubtful whether that
act was before the committee when they reported the bill in 1836,
as the intervening time had been short, and the eighteenth section,
on examining the journals and files, appears not to have been in
the bill at all as originally introduced, or as originally
reported, but was afterwards inserted as an amendment in the
Senate. The consideration of this section, therefore, does not seem
to have been so full as of the rest of the bill, and it is very
far, in language, from being a copy of the English act. Assignees
are not named at all in that act; and though, in extensions under
it, assignees have in two or three cases been allowed to
participate, it has only been where an enlarged equity justified it
-- as where the patentee consented, or was to receive a due share
in the benefits, or had clearly conferred a right in the extension
by the assignment, and where, also, the assignees are expressly
named in the new grant or patent as entitled to a share of it.
See Webster's Patent Cases 477.
There, also, an assignee, under like circumstances, would
doubtless
Page 45 U. S. 702
benefit by the renewal, under its ordinary operations, and the
practice in England, thus limited, will fortify rather than weaken
the construction I adopt of the true design of the last clause in
our own law.
There is much, also, in another collateral consideration here,
which does not apply in Great Britain, and which restricts
conferring the benefit of an extension, or an extension itself, on
an assignee by or under any statute, if it goes beyond what a
patentee had himself contracted to do.
Here the Constitution limits the powers of Congress to give
patents to inventors alone.
"The Congress shall have power to promote the progress of
science and the useful arts, by securing, for limited times, to
authors and inventors, the exclusive right to their respective
writings and discoveries."
Article I., § 8.
No authority is conferred to bestow exclusive rights on others
than "authors and inventors" themselves.
Hence a patent could not probably be granted to an assignee, nor
an extension bestowed on one, independent of the assent or
agreement of the patentee, or of its inuring to his benefit,
without raising grave doubts as to its being a violation of the
Constitution. But so far as inventors have expressly agreed that
assignees shall be interested in their patents, or in the
extensions of them, the latter may well be protected, and so, as
far as administrators represent the inventor or patentee, when
deceased, the grant to them is substantially a grant to the
inventor, as the benefit then inures to his estate and heirs. But
to grant an exclusive right to an assignee would confer no benefit
on the patentee, or his estate, and it would violate the spirit as
well as letter of the Constitution, unless the inventor had himself
agreed to it, and had substituted the assignee for himself by plain
contract, whether for the original term or any extension of it.
Cases have been cited in this country, likewise, where Congress,
in ten or twelve instances, have renewed patents to the inventors;
but they have never done it to assignees. And though in two out of
the whole, which were renewed after the term had expired and the
assignees and the public were in the free use of the patent, some
limitations have been imposed on requiring further payments from
the assignees for the longer use of the old patent; yet in these
only, and under such peculiar circumstances, has it been done, and
in these no term was granted by Congress directly to the assignee
rather than the patentee; and this limitation or condition in favor
of the assignee, in the grant to the patentee, is of very
questionable validity, unless it was assented to by the patentee.
In this case it is most significant of the views of Congress to
relieve the patentee rather than assignees, that by a special law,
passed February 26, 1845, they have conferred on the representative
of the
Page 45 U. S. 703
original patentee still another term of seven years, without
mentioning the assignees in any way, and without any pretense that
the benefits of this extension were designed for them.
The argument, that the assignee is sometimes a partner, and
makes liberal advances, furnishes a good reason, in a pecuniary
view, why an assignment should be made to him of such an interest
in the old patent as will indemnify him, but furnishes none for
giving him, even if he regards money above public spirit or
benevolence, more than an indemnity, or for giving him a benefit in
any renewal, which it has never been agreed he should have, and for
which he never has paid.
So the reasoning, that the assignee stands in the shoes or in
the place of the patentee, and represents him, and therefore should
have an interest in the extension, applies very well, so far as he
is assignee, or so far as the contract extends. But he no more
stands in the shoes of the patentee beyond the extent of his
contract, than an entire stranger does. Such are the cases of
Herbert v. Adams, 4 Mason 15, and that cited in 1 Hawk.
P.C. 477, note.
In one, the assignee of the old patent represented the patentee
as to that, and that only, and in the other, where by law a further
copyright was authorized in all cases, and the patentee assigned
his whole interest, the second term passed also; because the law
had previously given it absolutely, without contingency or evidence
of losses, but in connection with, or appurtenant to, the first
copyright.
Again, it has been urged that the assignee should have the
benefit of the extension; otherwise he may have made large
expenditures, in preparing for a free use of the patent after the
original term expires, and will loose them in a great degree, or be
obliged to pay largely for the continued use of the patent. But
this same reasoning applies equally well to the whole world as to
the assignee, because any individual, not an assignee, may have
incurred like expenditures in anticipation of the expiration and
free use of the old patent. In fact the argument is rather a
legislative than judicial one, and operates against the policy of
the whole section, rather than the construction put on the last
clause.
But the hardship to any person in such case is more apparent
than real. The price to be paid for the new patent is not so much
as the gain by it, and hence those who have proposed to use it and
do use it after the extension, and pay anew for a new or further
term, gain rather than loose, or they would have employed the old
machinery in operation before this invention.
Nor is it any relief to the community at large, as seems by some
to have been argued, to hold that the renewal, or a large part of
it, vests in the assignee and grantee rather than in the patentee.
For the great mass of the people must still purchase the patent, or
the
Page 45 U. S. 704
right to use it, of someone, and must pay as much for it to the
assignee as to the patentee.
Finally, the construction of the court, by conferring any
privilege whatever on assignees and grantees beyond the extent of
their interests in the thing patented, when those interests, as in
this case, were expressly limited in the contract to the term of
the old patent, goes, in my view, beyond the language of the act,
beyond the contract of assignment, beyond the consideration paid
for only the old term, and beyond any intention in the legislature
for relief or indemnity to others than unfortunate patentees.
I feel not a little fortified in these views on the case, by
several decisions and opinions that have heretofore been made, in
substantial conformity to them. Indeed, independent of opinions in
some of the actions now before us (from which an appeal has been
taken, or the cause has come up on a certificate of division),
every reported case on this subject has been settled substantially
in accordance with these views.
See Woodworth v. Sherman
and
Woodworth v. Cheever, Cir.Ct. for Mass., May Term
1844, decided by Justice Story;
Van Hook v. Wood, Cir.Ct.
for New York, October Term 1844, by Justice Betts;
Wilson v.
Curteis & Grabon, Cir.Ct. for Louisiana, by Justice
McCaleb;
Brooks & Morris v. Bicknell, Cir.Ct. for
Ohio, July Term 1844, by Justice McLean (Western Law Journal,
October, 1845); Butler's opinion, as Attorney General, in
Blanchard's case (Opinions of Attorneys General 1134 and 1209).
All that remains for me is to advert a moment to that branch of
the construction adopted by the majority of the Court, which, after
giving to both assignees and grantees a benefit in the new patent
or term beyond "the extent of their interests" under the contract
of assignment, undertakes to go still farther and make a
discrimination between assignees and grantees, as to the enjoyment,
under the renewal, of their different original interests. It gives
to the latter, the grantees, by the mere force of this last clause
in the eighteenth section, the enjoyment of all their old interests
during the whole of the new term, but it gives to the former, the
assignees, the enjoyment of only about a third portion of their old
interests during that term. In other words, it gives to "grantees
of the right to use the thing patented" a continuance of all their
interests, but to assignees, whose interests extended to the right
to make and to vend, as well as use, the thing patented, a
continuance of only a part of theirs. In such a discrimination,
uncountenanced and unwarranted, as it seems to me, by either the
words or the spirit of the act of Congress, I am sorry to find
another strong ground of dissent to the opinion of the court. The
act does not say, as is their construction, that "the benefit" of
only "the right to use the thing patented" shall extend to anyone,
whether an assignee or grantee; but that the benefit of the
renewal
Page 45 U. S. 705
shall extend to both, "to the extent of their respective
interests," though differing clearly in extent as they do, and as
will soon be more fully shown.
"Judges are bound to take the act of Parliament as the
legislature have made it." 1 D. & E. 52, and Dwarris on
statutes 711.
But the words in this act, "the right to use the thing
patented," must be transposed, and other words altered in their
ordinary meaning, to make these a description of the interests
conferred.
They are now a description of one kind of purchasers, that is
"grantees of the right to use the thing patented," to whom the
renewal should extend, if they had stipulated for any interests
therein by their contracts. The clause refers to two classes, who
may in such case be benefited by the renewal. "Assignees" are one
class, and "grantees of the right to use the thing patented" are
the other class. This accords with the language itself, and also
with the punctuation of this clause, as examined by me in
manuscript on file in the Senate, and as printed by the State
Department, having no comma or other pointing in it except after
the word "patented." It accords too with what is well understood to
be the fact, that assignees and grantees usually constitute two
distinct classes of purchasers, the former being those who buy a
part or all of the patent right itself, and can protect their
interests by suits in their own name, and the latter being those
who buy only "the right to use the thing patented," and generally,
except where the use is exclusive (fourteenth section), cannot
institute suits in their own name for encroachments upon it. In the
face of this, to hold that assignees and grantees mean the same
thing here, and that the words "of the right to use the thing
patented" apply equally to both, is a departure from the above
established usage in employing those terms, and gives a different
meaning to them from what is previously twice given in this very
act. Thus in the eleventh section an "assignment" is mentioned as
one thing, and "a grant and conveyance of the exclusive right,"
&c., as another, and in the fourteenth section, "assigns" are
spoken of as if one class, and "grantees of the exclusive right,"
&c., as if another. And why does the conclusion to this clause
say "to the extent of their respective interests therein," if such
assignees and grantees as to patents were not in this very clause
considered by Congress as having different interests, and that
these were to be protected according to their respective extents?
It would have said, and must be made to say, if sustaining the
construction of the court, "to the extent of that right," or "to
the extent of that interest," and there stop. Manifestly, then,
there is not conferred on these two classes, by this clause, either
in its spirit or
in totidem verbis, merely "the right to
use the thing patented," but on the contrary, "the benefit of the
renewal," "to the extent of their respective interests in the
Page 45 U. S. 706
thing patented." The interests of the grantees may be limited to
the use, and those of the assignees may not be, but include the
right to make and vend as well as use; yet large or long as may be
the interests of either, the benefit of the renewal is to cover
them, if the extent of them, under the original assignment or
grant, reached to the new term. One is not to have the whole of his
interests protected and the other a part only, when their equities
are the same. But the assignee is to have to the extent of his,
which is to make, vend, and use, and the grantee only "of the right
to use" is to have to the extent of his.
This, to my apprehension, is unquestionably the substance of
what Congress has said on this topic, and yet it is only by
supposing new language not in the act, or by transposing some of
the old, so as not to be in harmony with the original structure of
the sentence, or by giving a meaning to words different from what
has been established and, in my view, only by doing this that any
foundation can be laid in support of this part of the construction
approved by the court. But "it is safer," said Mr. J. Ashurst, "to
adopt what the legislature have actually said, than to suppose what
they meant to say." 1 D. & E. 52; 6 Adolph. & Ellis 7.
It may be well, also, not to forget that it is always more
judicial, and less like legislation, to adhere to what Congress
have actually said, and that it is more imperative to do this when
by adhering to it you carry out, as in this case, the manifest
intention of the previous part of the section. Nor can the
inconsistency produced by the construction of the court be without
influence in creating doubts as to its correctness, as by it "the
benefit of the renewal" will be extended to assignees and grantees
not in a ratio with "their respective interests" -- the words of
the law -- nor in conformity to their respective contracts, nor
according to the respective considerations they have paid, nor in
proportion to the respective losses they have sustained, but, under
the same general permission as to the extent of the "respective
interests" of both, one class will be allowed to the full extent of
his previous interests, and the other to only a part of that
extent.
By what authority, let me respectfully ask, is this general
permission thus divided, and in one class or case limited and in
the other not? By what legal authority are assignees cut off from a
valuable portion of their interests in a patent, while grantees to
use the thing patented are allowed to exercise the whole of theirs,
and both under one and the same general permission, covering all
"their respective interests"? To make this discrimination, and
allow to one class the full extent of their interests and to the
other not the full extent of theirs, when the law says it shall be
"to the extent of their respective interests," and when their
respective contracts and equities show that this should include
both the duration and quantity of their interests, looks like a
distinction in a great degree arbitrary,
Page 45 U. S. 707
and not a little in conflict with the plain words and design of
the act of Congress.
But beside this further departure from what seems to me the
obvious meaning of the eighteenth section, caused by this branch of
the construction of the Court, it will fail, I fear, as any
compromise of the difficulties arising under this section, if any
compromise be expected from it. It is not likely to avert ruin from
most of those indigent inventors, who have in their distresses
resorted for aid to the delusive provisions of that section. Their
very necessities and embarrassments, which are the justification
for granting the renewal to them, have usually forced them to sell
and assign all the original patent, as was the case with Woodworth
in this instance, and if in such circumstances the law is to strip
them of all benefits under the renewal, and, without any contract
to that effect, confer those benefits on the assignees and grantees
of the old patent, the law is perfectly suicidal as to the only
design to be effected by its bounty. But if, seeing this, the
construction is modified, as here, by the Court so as to deprive
the patentee in such cases of only the benefits of the use of his
old patent or old machines during the new term, this qualification
in the operation of the law will, it is apprehended, usually prove
a mere mockery, working, in most cases, as fully as the Court's
construction without the qualification would, the entire defeat of
the laudable object of the renewal towards patentees. In one or two
of the cases now before us, the patentee, under this construction,
will still be subjected to defeat and burdensome costs. In relation
to its effect on the present patent as a whole, all the
consequences cannot now be ascertained. But it is admitted, that
the inventor had assigned the whole of the old patent, so that no
right whatever to use will remain in his representatives to dispose
of; or if a right remains where machines are not now in actual use,
probably enough are now in use to supply for some time the public
wants in most parts of the United States.
The right to continue to use them will probably last during the
whole seven years the renewal runs, as the machine will usually,
with proper repairs, do service beyond that time. It will not,
then, be very difficult to calculate what value, during the seven
years, will be derived from the right to make and vend machines,
when the use of others already in existence is scattered over every
section of the country, and they may be employed all the time of
the extended patent, without the assignees or grantees ever having
paid or being obliged to pay a dollar for that extended use.
Looking, then, to the beneficient design of the eighteenth
section, to enforce the Constitution, by advancing science and the
arts, and protecting useful inventions, through the security for a
longer term to men of genius of a property in their own labors, in
cases where they had not been already remunerated for their time
and expenses, I cannot but fear that the construction given by the
majority
Page 45 U. S. 708
of the Court will prove most unfortunate. It will tend to plunge
into still deeper embarrassment and destitution, by losses in
litigation and by deprivation of a further extended sale of their
inventions, those whose worth and poverty induced Congress to
attempt to aid them.
Nor would a different construction tie up, as some suppose, the
future use of numerous patents. Of the fourteen thousand five
hundred and twenty-six heretofore issued, since the Constitution
was adopted, I am enabled, by the kindness of the Commissioner of
Patents, to state that only ten have been renewed under the
eighteenth section during nearly ten years it has been in
operation.
And if the individuals who use the improved machines, the fruit
of the toil and expense and science of others, were obliged in but
one case in a year, over the whole country, to pay something for
that further use, is it a great grievance? They are not obliged to
employ the patent at all, and will not unless it is better by the
amount they pay than what was in use before. And is it a great
hardship or inequitable where they are benefited by another's
talents, money, and labor to compensate him in some degree
therefor?
While other countries and Congress and our state courts are
adopting a more liberal course yearly towards such public
benefactors as inventors, I should regret to see this high tribunal
pursue a kind of construction open to the imputation of an opposite
character, or be supposed by anyone to evince a feeling towards
patentees which belongs to other ages rather than this (and which I
am satisfied is not cherished), as if patentees were odious
monopolists of the property and labors of others, when in truth
they are only asking to be protected in the enjoyment and sale of
their own -- as truly their own as the wheat grown by the farmer,
or the wagon built by the mechanic.
Nor should we allow any prejudices against the utility of
patents generally, and much less against the utility of the
invention now under consideration, to make our constructions more
rigid in this case. The settled doctrine of the courts now, under
the lights of longer experience, though once otherwise, is in
doubtful cases to incline to constructions most favorable to
patentees.
Grant v.
Raymond, 6 Pet. 218; 1 Sumner 485;
Wyeth v.
Stone, 1 Story 287;
Blanchard v. Sprague, 2 Story
169. Nor is it strange that this should be the case in the
nineteenth century, however different it was some generations ago,
when we daily witness how the world has been benefited since by the
patented inventions and discoveries in steam, in all its wonderful
varieties and utilities, and in cleaning, spinning, and weaving
cotton by machinery for almost half the human race, and in myriads
of other improvements in other things, shedding so benign a light
over the age in which we live, and most of them excited and matured
only
Page 45 U. S. 709
under the protection secured to their inventors by an
enlightened government.
Some estimate can be formed of the usefulness of the present
patent, and its title to favor, when one machine is computed to
perform the labor of planing and grooving in one day that would
require fifty days by a man, and which is supposed to reduce near
seven tenths the expense of such work in every building where the
improved method is used -- as it ere long will be by the many
millions of our own population, and in time over the civilized
world. Every honest social system must shield such inventions, and
every wise one seeks undoubtedly to encourage them.
To be liberal, then, in the protection of patentees, is only to
be just towards the rights of property. To stimulate them in this
and other ways to greater exertions of ingenuity and talent is to
increase the public wealth, and hasten the progress of practical
improvements, as well as of science. And to discountenance
encroachments on their rights, and defeat piracies of their useful
labors, is calculated in the end to better the condition of every
rank in society, and introduce wider and faster all the benefits of
a superior state of civilization and the arts.
