Woodworth et al. v. Wilson et al. 4 How.

[716] "The words 'to him in hand paid by the said' were erased, and the word 'ten,' and the words 'in the name of said Woodworth, administrator aforesaid, or in his own name,' were interlined before the execution of the foregoing instrument in presence of D. E. Sickles."

The cause was argued by Latrobe and Staples, for the complainants, Woodworth and Bunn, and by Bibb, for the defendants.

Mr. Justice NELSON delivered the opinion of the Court.

The objection taken, that the administrator could not apply for an extension of the patent granted to Woodworth, his intestate, under the eighteenth section of the Patent Law, has been disposed of in the previous case of Wilson v. Rousseau et al., and need not be further noticed.

Another objection taken to the right of the complainants to maintain the suit is, that Woodworth was not the first and original inventor of the planing machine, against the using of which the defendant was enjoined.

Without going into the proofs in the case, which are very voluminous, it will be sufficient to state, that after fully considering all the evidence produced bearing upon the question, the Court is satisfied that the weight of it is decidedly against the objection, and in favor of the allegation in the bill, that Woodworth was the original inventor of the machine.

It is objected, also, that the specifications accompanying the patent were not sufficiently full and explicit, so as to enable a mechanic of ordinary skill to build a machine. The Court is not satisfied, according to the proof in the case, that the objection is well founded, and it cannot be relied on as affording sufficient ground for the dismissal of the bill.

A further objection was taken, that W. W. Woodworth, one of the complainants, was improperly joined with E. V.

Hovey v. Stevens. 1 Wood. & Minot.

Bunn, the assignee of the exclusive right in Louisville and ten miles around it. The Court is of opinion, that the interest of Woodworth in the assignment, as appears from the record, is sufficient to justify his being made a party jointly with the assignee.

Some other objections were taken to the maintenance of the suit on the argument, which it is not material to notice particularly; they have all been considered, and in the judgment of the Court afford no sufficient ground for the dismissal of the bill and the dissolving of the injunction.

We think the Court erred, and that the decree dismissing the bill, as to the defendant James Wilson, and dissolving the injunction, should be reversed, and that a perpetual injunction should issue.

WILLIAM HOVEY, IN EQUITY, V. SILAS STEVENS.

[1 Woodbury & Minot, 290. May T. 1846.]

Where a bill is filed for an injunction against the use of a patent, and the answer denies the use of it, and also the originality of the invention, if the denial is supported by affidavits bringing the originality of the invention into doubt, an injunction will not issue till the parties settle the right in an action, which is pending between them at law, for a violation of the patent, unless the complainant shows, that he has for some time been in the undisturbed use and sale of his patent, or has recovered damages against others for the use of it.

*Nor can a patent be aided in respect to such an use or such recover- [* 291] ies, if it be one useful in respect to another patent for another in

vention, where such an use and such recoveries have been had, unless it is connected in law to that patent and is a part of it.

It is doubtful, whether a mere change in the mode of fastening knives on a cylinder to be ground, or to fasten one instead of several, is a change in 'structure from an old machine sufficient to justify a patent for it.

Hovey v. Stevens. 1 Wood. & Minot.

If the respondent constructed and used his machine before the complainant took out a patent for his, it is not a justification, if he had seen and copied an improvement from the complainants.

If the patentee claims, as a part of his invention, some things which are old and some new, he cannot succeed, without disclaiming what is old.

It should appear also with reasonable certainty, whether the complainant in his patent claims a new combination of old parts and things, or a new invention of new parts, and if not intelligible as to which is claimed, the patent may be void for uncertainty.

Declarations of a party, made before the dispute arose, in connection with acts, may be competent evidence for him, as tending to show what intentions then existed.

THIS was a bill in equity, filed April 14th, 1846, for an injunction against the defendant not to make or use a machine "for grinding tools," for which a patent had been taken out by the plaintiff, September 23d, 1845.

Among other things, the bill alleged that the plaintiff, before February 12th, 1844, had invented and obtained a patent for a machine called "Hovey's Spiral Revolving Straw Cutter," which, on the 1st of April, 1845, was violated by the defendant and one E. Hovey, who were sued therefor, and the action against the defendant settled or compromised, and that against Hovey prosecuted to a verdict and judgment in favor of the plaintiff. It was further averred, that the machine for grinding tools was necessary to make the other useful, being adapted to grind the knives in the straw-cutter and being a highly beneficial machine for that purpose, and that it was copied and infringed upon by the defendant, October 1st, 1845, to an extent very injurious to the plaintiff. That for this an action at law has been instituted against him, but before a trial can be had, the damage is likely to be great, and the defendant is irresponsible, and, therefore, an immediate injunction is prayed for.

[ * 292 ]

* Various other matters were detailed in the bill, but it is not necessary to repeat them, except as some of them may be mentioned in the opinion of the Court.

Hovey v. Stevens. 1 Wood. & Minot.

The answer denied the originality of the invention, and all the principal allegations affecting the defendant and was sworn to, accompanied by several affidavits. Others were put in by the plaintiff, which will be referred to in the opinion.

The case was argued at this term by Hallett and Charles Sumner, for the complainant, and Stanton and Charles L. Woodbury, for the defendant.

WOODBURY, J. I shall pass by all the formal objections to the bill in this case, as being multifarious, and as seeking distinct objects, some of which are supposed by the defendant to be improper and untenable. Because a decision on the merits may be more satisfactory to both parties, if there be enough in the case to enable me to form one.

Nor is it necessary to settle in detail the objections to some portions of the depositions, which are excepted to as incompetent; because my opinion will not rest on those portions where the declarations of third persons, not agents nor witnesses, are introduced by either side; or those of the parties are introduced by themselves, unless made before this dispute and proving the existence of certain inventions in connection with certain acts before a particular date. In such case, as developing a link in a transaction, they may be competent. See Burnham v. Rangeley, ante, p. 7, and cases there cited.

Looking then, to the merits, before deciding whether thé patent of the plaintiff for grinding tools has been violated or not, it is necessary to ascertain first, what is the extent and character of it; how are they, if this patent is considered as standing alone? and how are they, if it is considered as connected with the prior patent by the plaintiff for cutting straw?

Hovey v. Stevens. 1 Wood. & Minot.

[*293] * Standing alone, the patent itself purports to be merely for a new and useful improvement in machinery for grinding tools.”

When we refer to the schedule annexed for a specific and more minute description of it, the patent is described to be "a new and useful machine for grinding the twisted or spiral cutters or knives used in the machine for cutting straw, and generally known as Hovey's straw-cutter."

There is then added, "The nature of my invention consists in attaching the twisted (sometimes called spiral) blades or cutters to a flange, projecting from a stock, hung on journals in traversing carriage, so as to present the back of the cutter to be ground to the action of a grindstone or other reducing or polishing wheel, so that as the cutter on the carriage traverses lengthwise, it shall vibrate freely on the axis of the stock to which it is attached, to follow the twist of the blade, and grind it to a sharp edge, such as is required in cutting by impinging the cutting edges against the surface of a cylinder by the rotation of the two cylinders or the cutting cylinder on a plane, the cutting being effected by a pressure towards the centre of the axis of the cylinder of knives. The reciprocating motion of the cutters during the traverse motion being governed by the spiral or twisted surface of the knife itself, or any thing analogous thereto." Had the specification closed here, or only made references afterwards to the drawings, and some particulars as to gearing and details in the construction, there could not be much doubt that the patentee intended to claim, as a part of his invention, the "attaching the twisted (sometimes called spiral) blade or cutters, to a flange projecting from a stock."

But he proceeds to add another description of his invention, in which this part is omitted, and details it as being "to give to the stock to which the knives or cutters are attached, a reciprocating motion on its axis whilst it traverses longitu