THOMPSON, Circuit Justice.
This is an application for an injunction to restrain the defendants from an infringement of what the complainant claims to be his patent right. The patent bears date on the 6th of November, 1826, and the right claimed is an improvement whereby to support ships in or on dock at the bilge, called “bilge levers.” The specification commences with stating that “The improvement claimed, specified and described, consists of a new and useful method 3 [979]*979of supporting the bilge of the ship before she leaves the water, while in fact inaccessible to any other sure support.” And after a description of the cradle or carriage upon which the vessel is to rest, and the application of the bilge levers, the specification sums up the improvement claimed as follows: “I describe the specific principle of my invention or improvement claimed to be patented and above described, to be the shoring or supporting vessels when on or in dock at the bilge, by means of levers of the second class, on each side raised to contact or bearing, and effectually propped or sustained.”
The bill alleges that this was a new and useful improvement, and that the complainant was the true inventor thereof, and that prior to the 6th day of November, 1820, he made and constructed, and put in readiness for operation, the said improvement, at the city of New York; and having obtained his patent therefor, the improvement was put in operation under the license of the complainant, and that he became possessed of the exclusive right and liberty of making, constructing, using and vending the same, &c.; and after setting out the infringement complained of by the defendants, the bill prays that they and their agents may be enjoined and prohibited from using the aforesaid improvement on the bilge levers which they or either of them have constructed, in whole or in part, since the 13th day of May, in the year 1S27. so ordered or directed to be constructed, and from completing any such bilge levers which they or either of them have at any time in part made or constructed, and from constructing and making hereafter any such bilge levers, without the consent ;ri writing of the complainant. 4
[980]*980The defendants hare not as yet put in their answers, but the motion coming before the court on notice, affidavits in support of and against the application have been introduced by the respective parties; and the motion is resisted on two grounds: (1) That if the improvement claimed be new, the complainant is not entitled to it as the first and sole inventor. (2) That it is not, in point of fact, new, but had been for some time in use in England before the complainant obtained his patent, and that it is in principle the same as the bilge blocks or wedges used in “Morton’s patent slip,” and for which’ a patent was granted in England in the year 1818.
The rules and principles by which this court is governed, in applications like the present, are laid down in the case of Sullivan v. Redfield [Case No. 13.597], Whether the patent is good and valid, so as ultimately to secure the right claimed under it, belongs to a court of law, in which the parties have a right of trial by jury. The jurisdiction exercised by a court of equity, in granting an injunction, is in aid of the common law, and should not be asserted when the right was doubtful; and that the court, in granting the injunctions, acts upon the assumption that the right has been infringed, or that little or no doubt exists on that point. When there has been an exclusive possession, for some considerable time, of the patent right, the court will sometimes, on the ground of possession, grant an injunction, without putting the party previously to establish the validity of the patent at law. But when the patent is recent, and any real doubts are entertained of its validity, the court will requiie that to be established at law before it will grant the patentee the benefit of an injunction. These are believed to be principles well settled in this country and in the English chancery, and to be founded upon the soundest rules of justice and equity, 5
Does the complainant then bring himself within .these rules, either by showing an exclusive possession for such a length of time as to warrant the presumption of right, or by showing a clear and unquestionable right as the first inventor? The patent bears date in November last, and the improvement claimed does not, from the proofs, appear to have been earned into operation, until some time in the spring of 182G; and the complainant does not ask for an injunction to prohibit the use of bilge levers made prior to the 13th day of May last. This is not, therefore, a case which calls upon the court to protect the right, on the ground of possession; and, indeed, it is not easily perceived [981]*981bow the complainant can be said to have bad any possession, except wbat arises from the mere grant of the patent. There is no evidence of any recognition of bis exclusive title by the purchase of the patent right or otherwise; nor is there anything to show that bilge levers have been practically carried into operation by him, except what is to be drawn from the circumstance of their having been built for the dry dock company, under his superintendence, an'd whilst he was in their employ at an annual salary, but which is not alleged in the bill as any infringement of the complainant’s patent right. If there is anything, therefore, before the court to warrant the granting of an injunction, it must be on the ground that the complainant has clearly and satisfactorily shown himself the first inventor of the improvement claimed. That the patentee can-sustain his patent only on the ground of his being the original inventor, is very clear from tiie language of the patent law of 1793. 2 Bior. & D. Laws, 350 [1 Stat. 322.] The Oth section of that act declares that, if it shall appear that the thing secured by the patent was not originally discovered by the patentee, or that he had surreptitiously obtained a patent for the discovery of another person, the patent shall be declared void; and the patentee, before he can obtain a patent. is required to swear that he believes himself to be the true inventor or discoverer of the thing for which he solicits a patent; and the judicial interpretation which has uniformly been given to this law is, that the patentee must be the first inventor in order to sustain the patent. Odiorne v. Winkley [Case No. 10.432]; Whittemore v. Cutter [Id. 17,600]; [Evans v. Eaton], 3 Wheat. [16 U. S.] 513; Fess. Pat. 47-59, cases collated. It is not intended, upon the present application, to express, nor would I be understood as having formed an opinion, whether or not the complainant is the original inventor of the improvement claimed. This is a question proper to be tried at law, when any reasonable grounds of doubt exist upon that point. It is not pretended, on the part of the complainant, that bilge levers had ever been discovered or used by him previous to his entering into the employment of the dry dock company, in July. 1825, to construct a marine railway; and the plan for supporting the vessel presented by him to the company as an improvement upon Morton’s slips, contains no representation of bilge levers. The discovery, therefore, if his, was made during the time he was employed in constructing this railway: and it appears from one of his own witnesses, (Henry Steer.) that the marine rail was ready for hauling up vessels the latter part of February or early in March, 1S2U, and that the four first vessels hauled up were supported without the bilge levers.
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THOMPSON, Circuit Justice.
This is an application for an injunction to restrain the defendants from an infringement of what the complainant claims to be his patent right. The patent bears date on the 6th of November, 1826, and the right claimed is an improvement whereby to support ships in or on dock at the bilge, called “bilge levers.” The specification commences with stating that “The improvement claimed, specified and described, consists of a new and useful method 3 [979]*979of supporting the bilge of the ship before she leaves the water, while in fact inaccessible to any other sure support.” And after a description of the cradle or carriage upon which the vessel is to rest, and the application of the bilge levers, the specification sums up the improvement claimed as follows: “I describe the specific principle of my invention or improvement claimed to be patented and above described, to be the shoring or supporting vessels when on or in dock at the bilge, by means of levers of the second class, on each side raised to contact or bearing, and effectually propped or sustained.”
The bill alleges that this was a new and useful improvement, and that the complainant was the true inventor thereof, and that prior to the 6th day of November, 1820, he made and constructed, and put in readiness for operation, the said improvement, at the city of New York; and having obtained his patent therefor, the improvement was put in operation under the license of the complainant, and that he became possessed of the exclusive right and liberty of making, constructing, using and vending the same, &c.; and after setting out the infringement complained of by the defendants, the bill prays that they and their agents may be enjoined and prohibited from using the aforesaid improvement on the bilge levers which they or either of them have constructed, in whole or in part, since the 13th day of May, in the year 1S27. so ordered or directed to be constructed, and from completing any such bilge levers which they or either of them have at any time in part made or constructed, and from constructing and making hereafter any such bilge levers, without the consent ;ri writing of the complainant. 4
[980]*980The defendants hare not as yet put in their answers, but the motion coming before the court on notice, affidavits in support of and against the application have been introduced by the respective parties; and the motion is resisted on two grounds: (1) That if the improvement claimed be new, the complainant is not entitled to it as the first and sole inventor. (2) That it is not, in point of fact, new, but had been for some time in use in England before the complainant obtained his patent, and that it is in principle the same as the bilge blocks or wedges used in “Morton’s patent slip,” and for which’ a patent was granted in England in the year 1818.
The rules and principles by which this court is governed, in applications like the present, are laid down in the case of Sullivan v. Redfield [Case No. 13.597], Whether the patent is good and valid, so as ultimately to secure the right claimed under it, belongs to a court of law, in which the parties have a right of trial by jury. The jurisdiction exercised by a court of equity, in granting an injunction, is in aid of the common law, and should not be asserted when the right was doubtful; and that the court, in granting the injunctions, acts upon the assumption that the right has been infringed, or that little or no doubt exists on that point. When there has been an exclusive possession, for some considerable time, of the patent right, the court will sometimes, on the ground of possession, grant an injunction, without putting the party previously to establish the validity of the patent at law. But when the patent is recent, and any real doubts are entertained of its validity, the court will requiie that to be established at law before it will grant the patentee the benefit of an injunction. These are believed to be principles well settled in this country and in the English chancery, and to be founded upon the soundest rules of justice and equity, 5
Does the complainant then bring himself within .these rules, either by showing an exclusive possession for such a length of time as to warrant the presumption of right, or by showing a clear and unquestionable right as the first inventor? The patent bears date in November last, and the improvement claimed does not, from the proofs, appear to have been earned into operation, until some time in the spring of 182G; and the complainant does not ask for an injunction to prohibit the use of bilge levers made prior to the 13th day of May last. This is not, therefore, a case which calls upon the court to protect the right, on the ground of possession; and, indeed, it is not easily perceived [981]*981bow the complainant can be said to have bad any possession, except wbat arises from the mere grant of the patent. There is no evidence of any recognition of bis exclusive title by the purchase of the patent right or otherwise; nor is there anything to show that bilge levers have been practically carried into operation by him, except what is to be drawn from the circumstance of their having been built for the dry dock company, under his superintendence, an'd whilst he was in their employ at an annual salary, but which is not alleged in the bill as any infringement of the complainant’s patent right. If there is anything, therefore, before the court to warrant the granting of an injunction, it must be on the ground that the complainant has clearly and satisfactorily shown himself the first inventor of the improvement claimed. That the patentee can-sustain his patent only on the ground of his being the original inventor, is very clear from tiie language of the patent law of 1793. 2 Bior. & D. Laws, 350 [1 Stat. 322.] The Oth section of that act declares that, if it shall appear that the thing secured by the patent was not originally discovered by the patentee, or that he had surreptitiously obtained a patent for the discovery of another person, the patent shall be declared void; and the patentee, before he can obtain a patent. is required to swear that he believes himself to be the true inventor or discoverer of the thing for which he solicits a patent; and the judicial interpretation which has uniformly been given to this law is, that the patentee must be the first inventor in order to sustain the patent. Odiorne v. Winkley [Case No. 10.432]; Whittemore v. Cutter [Id. 17,600]; [Evans v. Eaton], 3 Wheat. [16 U. S.] 513; Fess. Pat. 47-59, cases collated. It is not intended, upon the present application, to express, nor would I be understood as having formed an opinion, whether or not the complainant is the original inventor of the improvement claimed. This is a question proper to be tried at law, when any reasonable grounds of doubt exist upon that point. It is not pretended, on the part of the complainant, that bilge levers had ever been discovered or used by him previous to his entering into the employment of the dry dock company, in July. 1825, to construct a marine railway; and the plan for supporting the vessel presented by him to the company as an improvement upon Morton’s slips, contains no representation of bilge levers. The discovery, therefore, if his, was made during the time he was employed in constructing this railway: and it appears from one of his own witnesses, (Henry Steer.) that the marine rail was ready for hauling up vessels the latter part of February or early in March, 1S2U, and that the four first vessels hauled up were supported without the bilge levers. The brig Shark, which was the fifth hauled up. was the first to which the bilge levers were applied; and, from the affidavits of Ezra Weeks, the president, and Samuel Stebbins, junior, the cashier of the New Fork Dry Dock Company, it appears that, before the bilge levers were constructed or used, it became a matter of common conversation, and doubts -were expressed whether vessels could be safely brought on the ways depending on the shear shores alone, which doubts or fears were communicated to the complainant by Steb-bins, who mentioned to the complainant that he thought, by placing the end of a piece of timber on the cradle near the keel of the vessel, and raising the other end up, until it should meet the bilge of the vessel, and then supporting it, the vessel would be rendered more secure than by the shear shores alone: that the idea appeared to be new to him: that, in the frequent conversations with him on the subject of shoring and securing" vessels on the railway, no mention was made by him of bilge levers; and, from the manner in which this communication was received, the deponents state that they verily believe that the complainant had never thought of constructing bilge levers until the idea was suggested by Stebbins. Whether this can be satisfactorily met and explained by the complainant, is a proper subject of inquiry on a trial at law. As the evidence now stands before the court, the suggestion first came from Stebbins of the use of supports to the bilge of vessels, in principle and substantially the same as that contained in the summary of the complainant’s patent, which he described to be “the shoring or supporting vessels when on or in dock at the bilge, by means of levers of the second class on each side, raised to contact or bearing, and effectually propped or sustained.”
If the suggestion, as above stated, was first made by Stebbins, and led to the construction and application of bilge levers, as used by the dry dock company, the question arises, how far will this affect the complainant’s patent? Without intending to express any definitive opinion on this point on the present occasion, so as to preclude the consideration of it upon the trial at law, I am satisfied it throws so much doubt upon the complainant's right, as to render it improper to grant an injunction until that right has been tried at law.
In Tenant’s Case, as reported in Fess. Pat. 102, it is held that the patentee must not only be the inventor, but the first and sole inventor of the thing which is the subject of the patent. In that case the action was brought by Tenant for an infringement of his patent for a bleaching liquor. The action was resisted on two grounds: That the same means for preparing the liquor had been used for some years before the date of the patent; and that the patentee was not the sole and first inventor. And in support of the latter ground, a chemist swore that he had had frequent conversations with Tenant on the means of improving bleaching [982]*982liquors, and in one of them had suggested to him that he would probably attain his end by keeping the lime-water constantly agitated; and Tenant afterwards informed the witness that this method had succeeded. This conversation was two years before the patented was obtained. Lord El-lenborougb declared the patent to be equally unfounded in law and justice, and nonsuited the plaintiff; and one of the grounds taken was, that the chemist had suggested to Tenant the agitation of the lime-water, which was indispensable to the process; and therefore it was not-the invention of the patentee. Here was the mere suggestion of the chemist, which the patentee took up and carried into practical operation. So, in the present case, the suggestion of the use of timbers, substantially in the 'manner afterwards adopted by Thomas, was first made by Stebbins. The mechanical improvement here suggested was plain and intelligible, and constitutes its whole value. The invention does not consist in the mere form of the application of the timbers to the bilge of the vessel. If Stebbins was the first inventor, he not having taken out any patent does not aid the complainant’s right; and if the circumstances are such as to show that they both contributed to the improvement, so as to make them joint inventors, a joint patent should have been taken out. Barret v. Hall [Case No. 1,047].
The application for the injunction is therefore refused, on the ground that it does not satisfactorily appear that the complainant is the first and sole inventor of the improvement claimed to be secured by his patent; and this supersedes the necessity of examining the other objections that have been taken to the validity of the patent. See Langdon v. De Groot [Case No. 8,059]; Goodyear v. Mathews [Id. 5.576]; Moms v. Huntington [Id. 9,831]; Sullivan v. Redfield [Id. 13,597]. Motion denied.
[Patent granted to J. Thomas, November 6, 1826, has not. so far as ascertained, been involved in any other cases reported prior to 1880.]