TANEY, Circuit Justice.
This case comes before the court upon a bill filed by James G. Wilson, against Joseph C. Turner, Jr., and John C. Turner, to restrain them from using a certain machine for planing planks and boards and other materials, which the said Turners have erected and are using in the city of Baltimore. John C. Turner, one of the defendants, has answered, and the material facts of the case as they appear upon the bill, answer and exhibits, so far as they affect this controversy, are as follows:
On the 27th of December, 1828, William Woodworth, of the state of New York, obtained a patent for the machine in question, of which, as the case now stands, he appears to have been the inventor, and according to the laws of congress then in force, this patent gave him and his assignees and grantees the exclusive right to use this invention for fourteen years from the date of his patent, and no longer; consequently, his monopoly would expire on the 27th day of December, 1842.
On the 28th of November, 1829, Wood-worth, the patentee, and James Strong (who had, by purchase from the patentee, become entitled to one-half of the interest in the patent), in consideration of the assignment to him of a rival patent, assigned to Toogood, Halstead and Tyack, and their assigns, all their right and interest in the patent, to be sold and used in the following places: “namely, in the 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, Missouri and the territories west of the 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 thereby granted, to them and their assigns for and during the term of fourteen years from the date of the patent:” as more fully appears by reference to the deed of assignment filed in the case. The respondents claim the right to construct and use the machine in question, by title derived from these assignees;
Woodworth, the patentee, died some time before the 9th of February, 1839; on which day, letters of administration on his estate were granted, to William W. Woodworth; and on the 16th of November, 1842, the administrator obtained from the board of commissioners established by the act of congress of 4th July, 1836, the renewal and extension of the patent, for the term of seven years from and after the expiration of the first term of fourteen years; and on the 9th of August, 1843, Woodworth the administrator assigned to James G. Wilson the complainant, all his right, title and interest, in and to the said letters patent renewed and extended as aforesaid, for the state of Maryland, east of the Blue Ridge; and under this assignment, he claims the exclusive right to the use of this machine, in the part of this state above mentioned, from the date of the assignment, until the expiration of the extended term of seven years; and he insists that Toogood, Halstead and Tyack, and those claiming under them, have no right in the patent, by virtue of the assignment of 28th November, 1829, at the expiration of the original term of fourteen years; and that the continued use of it by the respondents is an infringement of his right. It is upon this ground that he asks for the injunction.
At the time this patent was originally granted to Woodworth, and at the time of the assignment to Toogood, Halstead and Tyack, and the subsequent assignments, until one of the defendants became interested in the patent as assignee, there was no law authorizing, under any circumstances, the extension of a patent beyond fourteen years. At the expiration of that period of time, the exclusive rights of the patentee, and his assignees and grantees, terminated, and every person had the right to use the invention without any consent or license from the inventor. But by the act of July 4, 1836 (section 18), the patentee of an invention or discovery was authorized to obtain a renewal and extension of the patent for seven years, after the expiration of the term of fourteen years, upon proving, to the satisfaction of the board of commissioners, established by that act, that he had failed to obtain from the use and sale of his invention, a reasonable [237]*237remuneration for the time, ingenuity and expense bestowed upon it, aDd the introduction thereof into use; and that thereupon the said patent should have the same effect in law, as though it had been originally granted for the term of twenty-one years; and the same act provides, that the benefit of such renewal shall extend to the assignees and grantees of the right to use the thing patented, to the extent of their respective interests therein. This power of extension applied to patents granted before the passage of the act, as well as to those which should be afterwards issued, and consequently, embraced the patent in question.
The dispute now before us arises upon the construction of the provision in favor of assignees and grantees. It is contended, on the part of the complainant, that this provision embraces only the rights which had been acquired in the original term of fourteen years, and that assignees and grantees of the original patent can claim no benefit, from their contracts, in the extended term of seven years; that the latter enures altogether to the benefit of the patentee; gives him the exclusive right to vend, assign and use the invention during that period; and authorizes him. to prevent the use of it by those who had purchased the privilege for themselves immediately, or for particular districts of country, for the original time. If this be the construction of the act of congress, the provision in favor of assignees and grantees would seem to the court to be useless and nugatory. No one would suppose that the grant of this new right annulled all contracts made under the old one, and that giving to the patentee an additional term of seven years, would deprive purchasers of the rights which they had acquired in the original term, before the renewal was granted. If the pat-entee had assigned all his right, in a particular district or state, for and during the whole fourteen years, or even for a shorter period, surely that contract would continue binding upon him, notwithstanding he after-wards procured an extension of his .patent, and congress could hardly have deemed it necessary to make a special provision for its protection. Certainly, according to this construction, assignees or grantees would derive no advantage from the renewal; yet the law clearly intended that they should share in the benefit conferred on the patentee, and have some advantage from the extension of the patent for seven years; for it provides, in express terms, that the benefit of the renewal shall extend to them, thus using a word which shows that it was not the intent of the legislature merely to protect interests which previously existed in assignees and grantees, but to give them a share in the benefit conferred on the patentee by the renewal of the patent.
Moreover, assignees who had purchased the title of the patentee, in particular states and territories, and individuals who had paid for the right to use the invention during the original period of the monopoly, might have suffered serious injustice by the grant of a new and further term to the patentee, unless-they were embraced in it; and they would, therefore, very naturally and properly be the objects of protection.
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TANEY, Circuit Justice.
This case comes before the court upon a bill filed by James G. Wilson, against Joseph C. Turner, Jr., and John C. Turner, to restrain them from using a certain machine for planing planks and boards and other materials, which the said Turners have erected and are using in the city of Baltimore. John C. Turner, one of the defendants, has answered, and the material facts of the case as they appear upon the bill, answer and exhibits, so far as they affect this controversy, are as follows:
On the 27th of December, 1828, William Woodworth, of the state of New York, obtained a patent for the machine in question, of which, as the case now stands, he appears to have been the inventor, and according to the laws of congress then in force, this patent gave him and his assignees and grantees the exclusive right to use this invention for fourteen years from the date of his patent, and no longer; consequently, his monopoly would expire on the 27th day of December, 1842.
On the 28th of November, 1829, Wood-worth, the patentee, and James Strong (who had, by purchase from the patentee, become entitled to one-half of the interest in the patent), in consideration of the assignment to him of a rival patent, assigned to Toogood, Halstead and Tyack, and their assigns, all their right and interest in the patent, to be sold and used in the following places: “namely, in the 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, Missouri and the territories west of the 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 thereby granted, to them and their assigns for and during the term of fourteen years from the date of the patent:” as more fully appears by reference to the deed of assignment filed in the case. The respondents claim the right to construct and use the machine in question, by title derived from these assignees;
Woodworth, the patentee, died some time before the 9th of February, 1839; on which day, letters of administration on his estate were granted, to William W. Woodworth; and on the 16th of November, 1842, the administrator obtained from the board of commissioners established by the act of congress of 4th July, 1836, the renewal and extension of the patent, for the term of seven years from and after the expiration of the first term of fourteen years; and on the 9th of August, 1843, Woodworth the administrator assigned to James G. Wilson the complainant, all his right, title and interest, in and to the said letters patent renewed and extended as aforesaid, for the state of Maryland, east of the Blue Ridge; and under this assignment, he claims the exclusive right to the use of this machine, in the part of this state above mentioned, from the date of the assignment, until the expiration of the extended term of seven years; and he insists that Toogood, Halstead and Tyack, and those claiming under them, have no right in the patent, by virtue of the assignment of 28th November, 1829, at the expiration of the original term of fourteen years; and that the continued use of it by the respondents is an infringement of his right. It is upon this ground that he asks for the injunction.
At the time this patent was originally granted to Woodworth, and at the time of the assignment to Toogood, Halstead and Tyack, and the subsequent assignments, until one of the defendants became interested in the patent as assignee, there was no law authorizing, under any circumstances, the extension of a patent beyond fourteen years. At the expiration of that period of time, the exclusive rights of the patentee, and his assignees and grantees, terminated, and every person had the right to use the invention without any consent or license from the inventor. But by the act of July 4, 1836 (section 18), the patentee of an invention or discovery was authorized to obtain a renewal and extension of the patent for seven years, after the expiration of the term of fourteen years, upon proving, to the satisfaction of the board of commissioners, established by that act, that he had failed to obtain from the use and sale of his invention, a reasonable [237]*237remuneration for the time, ingenuity and expense bestowed upon it, aDd the introduction thereof into use; and that thereupon the said patent should have the same effect in law, as though it had been originally granted for the term of twenty-one years; and the same act provides, that the benefit of such renewal shall extend to the assignees and grantees of the right to use the thing patented, to the extent of their respective interests therein. This power of extension applied to patents granted before the passage of the act, as well as to those which should be afterwards issued, and consequently, embraced the patent in question.
The dispute now before us arises upon the construction of the provision in favor of assignees and grantees. It is contended, on the part of the complainant, that this provision embraces only the rights which had been acquired in the original term of fourteen years, and that assignees and grantees of the original patent can claim no benefit, from their contracts, in the extended term of seven years; that the latter enures altogether to the benefit of the patentee; gives him the exclusive right to vend, assign and use the invention during that period; and authorizes him. to prevent the use of it by those who had purchased the privilege for themselves immediately, or for particular districts of country, for the original time. If this be the construction of the act of congress, the provision in favor of assignees and grantees would seem to the court to be useless and nugatory. No one would suppose that the grant of this new right annulled all contracts made under the old one, and that giving to the patentee an additional term of seven years, would deprive purchasers of the rights which they had acquired in the original term, before the renewal was granted. If the pat-entee had assigned all his right, in a particular district or state, for and during the whole fourteen years, or even for a shorter period, surely that contract would continue binding upon him, notwithstanding he after-wards procured an extension of his .patent, and congress could hardly have deemed it necessary to make a special provision for its protection. Certainly, according to this construction, assignees or grantees would derive no advantage from the renewal; yet the law clearly intended that they should share in the benefit conferred on the patentee, and have some advantage from the extension of the patent for seven years; for it provides, in express terms, that the benefit of the renewal shall extend to them, thus using a word which shows that it was not the intent of the legislature merely to protect interests which previously existed in assignees and grantees, but to give them a share in the benefit conferred on the patentee by the renewal of the patent.
Moreover, assignees who had purchased the title of the patentee, in particular states and territories, and individuals who had paid for the right to use the invention during the original period of the monopoly, might have suffered serious injustice by the grant of a new and further term to the patentee, unless-they were embraced in it; and they would, therefore, very naturally and properly be the objects of protection. For in cases like the present, where the patent was issued, and the purchaser obtained his assignment, before the passage of the act of 1836, both parties must have understood that the exclusive' right of the patentee for its whole period was. transferred; and that at the expiration of the fourteen years, the assignee would have the-right to use the invention without interruption, and without paying the inventor any further compensation.
The object of the clause in question is to-preserve the contract, in the sense in which, both parties understood and intended it, at the time it was made, and to secure to the-purchaser the right which he intended to buy, and supposed he had bought, and which the patentee must have intended to sell, and at the time of the contract, must have supposed he had sold. Indeed, the power of extension given by the act of 1836 would have operated most unjustly upon those who had purchased the right to use a patented machine, if it had not been accompanied by a provision for their protection; for, relying on the assurance given by the law, as it stood when the contract was made, that they had purchased for the whole period of the monopoly, and that they might lawfully continue the use of the invention after the expiration of the fourteen years, many grantees, after having obtained the assignment or grant from the patentee, had undoubtedly erected costly machinery, and encountered expenses, which they would not have incurred, if they had supposed it would be in the power of the pat-entee to forbid the use of his invention, after the time limited by his original patent; and, if with these expenses incurred and arrangements made for the continued use of the improvement, congress had passed the law of 1836, without this provision in favor of assignees and grantees, it would have enabled the patentee to deal with them most severely and oppressively, and to exact from them a far heavier sum for the extended term of seven years, than they would have been willing, under other circumstances, to have given for the- original term of fourteen.
The legislature obviously, we think, intended to guard the party who had purchased from the patentee the right to use his invention until the expiration of his exclusive privilege, from the necessity of buying it again. And when they were giving the patentee a new privilege, and one which he had no legal right to demand, they had undoubtedly a right to annex to it such conditions and limitation as, in their judgment, justice required.
The construction which we put upon the law is conformable also to the previous legislation of congress upon a similar subject; for [238]*238in the act passed the 21st January, 1808, entitled “An act for the relief of Oliver Evans” (6 Stat. 70), whereby, in consideration or the ■particular circumstances of-the a new patent was granted to him, after the expiration of the original one, there is an express provision, that no person who had before -paid him for a license to use his improvements, should be obliged to renew it, or be subject to damages for not renewing it; thus granting the new patent upon the same' principles, with reference to purchasers, that has . been adopted and followed in the act of 1836, - in cases of the extension of the term.
• It is true, as was urged in the argument, that the right of extension is obviously given by the law, chiefly with a view to the ad- • vantage of the -inventor, and not of his as? •signees or grantees; and that the patent, if extended at all, must be extended on the application of the-inventor, and not his assignees; and the' reason of this distinction is evident; The assignee purchases because he supposes the improvement is worth the money he pays for it, and that he can make a profit by his bargain; and if it afterwards turns out that he was mistaken, and his speculation in the patent-right proves to be a losing one, there would be no more justice in giving him a new privilege, whereby the public would be compelled to make good his losses, than there would be in the case of any other speculation, which proved to be unfortunate. But the same reason which would operate to prevent an extension to the assignee, would apply with equal force between the patentee and assignee, where the right to extend was conferred on the former. Por he assigns his right to the exclusive privilege in a particular district of country, or grants it to a particular individual for -his own use, for a price which he deems adequate, and is willing to take; and it would hardly be just, if the invention aft-erwards proved to be more valuable than he himself supposed it to be, to re-invest him on that account with the exclusive privilege for a new term, in such a manner as would enable him to compel those who had already bought, to buy again; the more especially, when the enhanced value is often produced by the industry and expenditures of the assignee or grantee, in bringing it into more public use and more general notice.
There is one evident distinction, however, between the patentee and assignee, so far as the public is concerned. If the invention is a valuable one, the inventor confers a benefit upon the public, and yet, without any fault of his, he may fail to obtain a reasonable remuneration within the fourteen years, for the time, ingenuity and expense which he bestowed upon it; his title may be controverted, and a large portion of the time spent in expensive litigation; he may be unable to erect the improvements necessary to show its value and bring it into notice; he may have been unable to make sale of his privilege to others, upon terms which he was willing to take; and as between him and the public, therefore, which is to be ultimately benefited by the improvement, there is justice in the extension. It is to cases of this description that the act of congress applies. It proposes to do justice between the inventor and the public, while it protects assignees and grantees in the rights which they had previously acquired by contract with the patentee.
Besides, the words of the law appear to us to admit of no other interpretation than' the one we have given. It declares that the benefit of the renewal shall extend to assignees and. grantees of the thing patented, to thé extent- of their respective interests therein. 'Now, what benefit have they in the renewal, if they are excluded from the use of the thing patented during the whole of the renewed time? According to that construction of the law, so far from receiving a benefit, they would be subjected to loss. They would not even enjoy the right which they supposed they had bought, but would be compelled, at the expiration of the fourteen years, to stop the works they had constructed, at whatever loss it might occasion,- unless the patentee gave them leave to pro^ ceed; yet the law, in plain terms, declares that they are to derive an advantage from the extension, and that the benefit of thé renewal shall extend' to them according to ■their respective interests. In other words, It means to provide, that assignees and grantees shall share with the patentee the benefit of the renewal, according to the interests which they had respectively acquired in the thing patented, within particular dis; tricts of country, or for their own individual ■use.
' The construction we have given to this law, is not only called for by its language, but conforms to the principles established by congress, in a similar case, in the act of 1839. The seventh section of that act enables the inventor to obtain a patent, although he may have previously sold the right to use or vend it to different persons, provided the sale was not more than two years before his application for a patent, and provided further, that such invention had not been abandoned to the public. But the same section also provides, that the party who purchased prior to the application for a patent, may, notwithstanding the patent, continue to use the invention and vend it to others to be used, without incurring any liability to the inventor, or any other person interested in the invention. This privilege of the purchaser is without limitation as to time, and evidently would extend to a renewed or extended patent, as well as to the original term of fourteen years.
It was decided by the supreme court, in the case of McClurg v. Kingsland, 1 How. [42 U. S.] 202, that this right is not confined [239]*239to the particular machine actually constructed or manufactured before the application for the patent, but that the purchaser may continue to construct, manufacture and vend the machine or composition of matter, after the patent has been obtained. Now there can be no reason for denying to a purchaser, who makes his purchase after the patent, the privileges which the law obviously intended to secure to the party who made his purchase or obtained the license of the inventor before. If the rule is just in one case, it is just in the other; and if it be said that, in the last-mentioned case, the purchaser might not know that the inventor would ever apply for a patent, and had no reason to suppose that any obstacle would afterwards be interposed to the free and undisturbed use of the right he had purchased, the same must be said of the case now before the court: for the purchaser could not know that the inventor would ever apply for a renewed term; and when he purchased the right for the whole time of the existing monopoly, he had no reason to suppose that- any new obstacle would afterwards be interposed, to prevent the free, undisturbed and continued use of that right. It would make the legislation of congress in these two laws inconsistent and contradictory in its principles, and, as we think, inconsistent with justice, in cases like the one before us, if we gave to the act of 1836 the construction contended for by the complainant.
Affirmed by the supreme court, in 4 How. [45 U. S.] 712.
[For other cases involving this patent, see note to Bieknell v. Todd, Case No. 1,389.]
But If the law admitted of a different construction, yet the covenant of the inventor and his partner, contained in the deed of assignment hereinbefore mentioned, of 28th November, 1829, would, in the judgment of the court be an insuperable bar to the relief asked for by the bill; for it is expressly agreed between the parties to that instrument, that any improvement in either of the' patents mutually assigned, in the machinery, or any alteration or renewal of the same, shall accrue to the benefit of the respective parties in interest, and may be applied and used within their respective districts, as therein designated. It is very true that, at the time this contract was made, the law authorizing the renewal in question had not passed, and the parties probably did not contemplate the passage of such a law. But whether the word “renewal” did or did not look to the extension of time given by the act of 1836, it is evident, upon the words of the covenant, that w'hatever additional value either inventor might afterwards be able to obtain for his invention, it should enure to the benefit of the assignee within the district assigned. The parties were not only bound forever afterwards to offer no obstruction to one another in their particular districts, but to give to each other the full benefit of their respective exertions to increase the value of these inventions; and if they then only looked to a renewal to be procured by surrendering the existing patent, if it should be found to be defective, and taking out a new one, according to the act of July 3, 1832; yet it íb very clear, that both parties intended that every benefit of every kind that might be obtained for the respective inventions, should belong to the assignees in their respective districts. They were, in that respect, to have a common interest in their inventions, and they have used the broadest words to accomplish that object; words which unquestionably embrace every mode by which the value of the patents could be increased.
Each assignee, in his respective district,was to have precisely the same rights and benefits as the patentee himself had, or might afterwards obtain, so far as concerns these inventions; and if, by a subsequent act of congress, advantages were given to the patentee, which he did not at that time possess, and which were not therefore in the contemplation of the parties, yet, according to the spirit and meaning of the covenant, the assignee had a right to stand in the place of the patentee, in his district, in respect to the new privilege as well as to the old; and It would be against equity and conscience to allow him to use a privilege, afterwards unexpectedly gained, in order to defeat his own contract, in a manner obviously inconsistent with the intention of the parties.
A case of this description is not one in which a court of equity is bound to lend its aid, even if the party had a right at law upon the technical construction of the covenant. But we think that the word “renewal” is broad enough to embrace not only renewals then authorized- by law, but renewals that might afterwards be provided for; and that this construction of the word conforms in every respect to the scope and spirit Of the agreement, and carries into effect the evident intention and design of the parties at the time they made it, and is the only construction which will do equal justice to both parties. Upon the whole, therefore, the court are of opinion that the complainant is not entitled to relief, and that his bill must be dismissed. Bill dismissed -with costs.