Wyeth et al. v. Stone et al. 1 Story. plaintiff, Tudor, was altogether limited to shipments in the foreign ice trade, and that the defendants' business, being confined to the domestic ice trade, did not interfere practically with his interest under the patent. The violation of the patent was the same, and the acquiescence the same, when the ice was cut by Wyeth's invention, whether the ice was afterwards sold abroad, or sold at home. Nor does it appear that the defendants have as yet engaged at all in the foreign ice trade. It is the acquiescence in the known user by the public, without objection or qualification, and not the extent of the actual user, which constitutes the ground upon which courts of equity refuse an injunction in cases of this sort. The acquiescence in the public use, for the domestic trade, of the plaintiff's invention for cutting ice, admits that the plaintiff no longer claims or insists upon an exclusive right in the domestic trade under the patent; and then he has no right to ask a court of equity to restrain the public from extending the use to foreign trade, or for foreign purposes. If he means to surrender his exclusive right in a qualified manner, or for a qualified trade, he should at the very time. give public notice of the nature and extent of his * allowance of the public use, so that all persons [* 284] may be put upon their guard, and not expose themselves to losses or perils, which they have no means of knowing or averting during his general silence and acquiescence. The cases which have been already cited, fully establish the doctrine, that courts of equity constantly refuse injunctions, even where the legal right and title of the party are acknowledged, when his own conduct has led to the very act or application of the defendants, of which he complains, and for which he seeks redress. And this doctrine is applied, not only to the case of the particular conduct of the party towards the persons with whom the controversy now exists, but also to cases where his conduct with others may influence the X Wyeth et al. v. Stone et al. 1 Story. Court in the exercise of its equitable jurisdiction.1 Under such circumstances, the Court will leave the party to assert his rights, and to get what redress he may at law, without giving him any extraordinary aid or assistance of its own. But the difficulty in the present case arises not so much from the doctrine considered in itself, as from the utter impracticability of applying it on account of the state of the pleadings. The point is not raised, or even suggested in the answer, in any manner whatsoever, as a matter of defence; and, of course, it is not in issue between the parties; and the whole evidence taken on the point is irrelevant, and cannot be looked to, as a matter in judgment. This defect in the pleadings, therefore, puts the question entirely beyond the reach of the Court. In the next place, as to the objections taken to the specification. The question here necessarily arises, for what is the patent granted? Is it for the combination of the two ma chines described in the specification, (the cutter [*285] and the saw,) * to cut ice? Or for the two machines separately? Or for the two machines, as well separately as in combination? Or for any mode whatsoever of cutting ice by means of an apparatus, worked by power, not human, in the abstract, whatever it may be? If it be the latter, it is plain that the patent is void, as it is for an abstract principle, and broader than the invention, which is only cutting ice by one particular mode, or by a particular apparatus or machinery. In order to ascertain the true construction of the specification in this respect, we must look to the summing up of the invention, and the claim therefor, asserted in the specification; for it is the duty of the patentee to sum up his invention in clear and determinate terms; and 1 Rundell v. Murray, Jacob's R. 311, 316: Saunders v. Smith, 3 Mylne & Craig, 711, 728, 730, 735. Wyeth et al. v. Stone et al. 1 Story. his summing up is conclusive upon his right and title. This was the doctrine maintained in Moody v. Fiske,1 2 Mason, R. 112, 118, 119; and I see no reason to doubt it, or to depart from it. Now, what is the language in which the patentee has summed up his claim and invention? The specification states: "It is claimed as new, to cut ice of a uniform size, by means of an apparatus worked by any other power than human. The invention of this art, as well as the particular method of the application of the principle, are claimed by the subscriber," (Wyeth.) It is plain, then, that here the patentee claims an exclusive title to the art of cutting ice by means of any power, other than human power. Such a claim is utterly unmaintainable in point of law. It is a claim for an art or principle in the abstract, and not for any particular method or machinery, by which ice is to be cut. No man can have a right to cut ice by all means or methods, or by all or any sort of apparatus, although he is not the inventor of any or all of such means, methods, or apparatus. A claim broader than the actual invention of the patentee [* 286 ] is, for that very reason, upon the principles of the common law, utterly void, and the patent is a nullity.2 Unless, then, the case is saved by the provisions of the Patent Act of 1836, ch. 357, or of the Act of 1837, ch. 45, which will hereafter be considered, the present suit cannot be sustained. But, besides this general claim, there is another claim in the specification for the particular apparatus and machinery to cut ice, described in the specification. The language of 1 See also Hill v. Thompson, 8 Taunt. R. 375. 2 Moody v. Fiske, 2 Mason, R. 112, ante, 312; Brunton v. Hawkes, 4 Barn. & Ald. 541; Hill v. Thompson, 8 Taunt. R. 375, 399, 400: Evans v. Eaton, 7 Wheat. R. 356, ante, 336; Phillips on Patents, ch. 11, s. 7, p. 268 to 282. Wyeth et al. v. Stone et al. 1 Story. the specification here is: "The invention of this art," (the general claim already considered,) "as well as the particular method of the application of the principle," (omitting the words of reference, as above described,) "are claimed by the subscriber." Now, assuming the former objection, that the claim for a general or abstract principle is not a fatal objection in the present case, it has been argued, that the specification is too ambiguous to be maintainable in point of law; for it does not assert what is claimed as the patentee's invention; whether it be the two machines separately and distinctly, as several inventions, or the combination of them, or both the one and the other. It appears to me, that the language of the summary may be, and indeed ought to be construed, ut res magis valeat, quam pereat, to mean by the words "the particular method of the application," the particular apparatus and machinery described in the specification to effect the purpose of cutting ice. I agree, that the patentee is bound to describe, with reasonable certainty, in what his invention consists, [* 287] and what his particular claim is. But it does not seem to me that he is to be bound down to any precise form of words; and that it is sufficient, if the Court can clearly ascertain, by fair interpretation, what he intends to claim, and what his language truly imports, even though the expressions are inaccurately or imperfectly drawn. Is the patent, then, a patent for the combination of the two machines, namely: the saw and the cutter? If it be, then the defendants clearly have not violated the patent-right; for they use the cutter only; and the saw-machine has been abandoned in practice by the patentee himself, as useless, or unnecessary. It appears to me, that the patent is not for the combination of the machines, but for each machine separately and distinctly, as adapted to further and produce the same general result, and capable of a separate and independent use. Wyeth et al. v. Stone et al. 1 Story. In short, the one may be auxiliary, but is not indispensable to the use of the other. I deduce this conclusion from the descriptive words of the specification, which show, that each machine is independent of the other in its operations, and from the silence of the patentee as to any claim for a combination. This claim, then, for "the particular method of the application of the principle," although inartificial, may be reasonably interpreted, as used distributively, and as expressive of a distinct claim of each particular method set forth in the specification. I deem the patent, then, to be a claim for each distinct machine, as a separate invention, but conducing to the same common end. Of course, if either machine is new, and is the invention of Wyeth, and it has been actually pirated by the defendants, the plaintiff is entitled to maintain a suit therefor, under the Acts of 1836 and 1837, although not at the common law. A fortiori, the same doctrine will apply, if both machines are new, upon the principles of the common law. But it has been said, that if each of the machines patented * is independent of the other, then sepa- [* 288 ] rate patents should have been taken out for each; and that they cannot both be joined in one and the same patent; and so there is a fatal defect in the plaintiff's title. And for this position the doctrine stated in Barrett v. Hall, 1 Mason, R. 473, and Evans v. Eaton, 3 Wheat. R. 454, 506,1 is relied on. I agree, that under the general Patent Acts, if two machines are patented, which are wholly independent of each other, and distinct inventions, for unconnected objects, then the objection will lie in its full force and be fatal. The same rule would apply to a patent for several distinct improvements upon different machines, having no 1 See also Phillips on Patents, pp. 214, 215, 216. |