Order.

use said machine, and to vend the same to others for use, within the county of Escambia, in the Territory of West Florida, did authorize said defendant to vend elsewhere than in said county of Escambia, to wit, in the city of New Orleans, State of Louisiana, plank, boards, and other materials product of a machine established and used within the said county of Escambia, in the Territory of West Florida.

"Wherefore, upon the request of defendants' counsel, it is ordered and directed that the foregoing points of law be certified for the opinion of the Supreme Court of the United States."

The case was argued by Gilpin and Westcott, for the defendants below, who were the appellants in this court, and by Henderson and R. Johnson, for Wilson.

Mr. Justice NELSON delivered the opinion of the court.

The questions in this case come up on the certificate of a division of opinion in the court below. The judgment of this court in the previous case of Wilson v. Rousseau et al., upon the second question certified in that case, disposes of the first question certified here, and is answered accordingly.

The second question certified involves the point, whether or not the assignment of an exclusive right to make and use, and to vend to others, planing-machines, within a given territory only, authorizes the assignee to vend elsewhere, out of the said territory, the plank, boards, and other materials the product of said machines.

The court have no doubt but that it does; and that the restriction in the assignment is to be construed as applying solely to the using of the machine. There is no restriction as to place of the sale of the product. Certificate accordingly to the court below.

ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the District of Louisiana, 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, by law, the extension and renewal of the said patent granted to William Woodworth, and obtained by William W. Woodworth, his executor, did not inure to the benefit of said defendant to the extent that said defendant was interested in said patent before such renewal and extension; but the law saved to persons in the use of machines at the time the extension

Opinion of the court.

takes effect the right to continue the use. 2. That an assignment of an exclusive right to use a machine, and to vend the same to others for use, within a specified territory, does authorize an 'assignee to vend elsewhere, out of the said territory, plank, boards, and other materials the product of such machine.

It is, therefore, now here ordered and decreed by this court, that it be so certified to the said Circuit Court.

JAMES G. WILSON, COMPLAINANT AND APPELLANT, v. JOSEPH TURNER JUNIOR, AND JOHN C. TURNER, DEFENDANTS.

(4 Howard, 712.)

The decision of the court in the two preceding cases, namely, that where a patent is renewed, under the act of 1836, an assignee under the old patent has a right to continue the use of the machine which he is using at the time of the renewal, again affirmed.

THIS case came up by appeal from the Circuit Court of the United States for the District of Maryland, sitting as a court of equity.

The bill was filed by Wilson, as the assignee of William W. Woodworth, the administrator of Woodworth, the patentee, as stated in the report of the preceding case. It set out the patent and assignment, and then prayed for an injunction and account.

The answer referred to the mutual assignment made between Woodworth and Strong on the one part, and Toogood, Halstead, Tyack, and Emmons of the other part, which was recited in the preceding case, and traced title regularly down from these latter parties to the defendants.

A statement of these facts was agreed upon by counsel, and all the documents set forth at length; and upon this statement, together with the bill and answer, the cause was argued.

At April Term, 1845, the court dismissed the bill, and from this decree the case was brought up by appeal to this court.

It was argued by Phelps and Webster, for Wilson, the appellant, and Schley, for the appellees, who were the defendants below.

Mr. Justice NELSON delivered the opinion of the court.

The judgment of the court in the previous case of Wilson v. Rousseau et al. disposes of the question in this case, and affirms the decree of the Circuit Court.

Statement of the case.

WILLIAM W. WOODWORTH, ADMINISTRATOR, &C., AND E. V. Bunn, asSIGNEE, COMPLAINANTS AND APPELLANTS, v. JAMES, BENJAMIN, AND ALPHEUS WILSON.

(4 Howard, 712.)

1. An objection to the validity of Woodworth's patent for a planing-machine, namely, that he was not the first and original inventor thereof, is not sustained by the evidence offered in this case.

2. Nor is the objection well founded, that the specifications accompanying the application for a patent are not sufficiently full and explicit, so as to enable a mechanic of ordinary skill to build a machine.

3. An assignee of the exclusive right to use ten machines within the city of Louisville, or ten miles around, may join his assignor with him, in a suit for a violation of the patent-right, under the circumstances of this case.

THE bill was filed in this case in the Circuit Court for the District of Kentucky, by the complainants, setting forth that William Woodworth was the inventor and patentee of a certain planing-machine, describing it; also, the extension of the said patent to W. W. Woodworth, as administrator, and that E. V. Bunn, one of the complainants, took an assignment from the said W. W. Woodworth for the exclusive right of making, using, and vending machines for planing, &c., under the extension of the patent, within the limits of the city of Louisville, and in the district of country ten miles around said city.

The bill further charges that the defendants have, in violation of the rights of the complainants, erected and put in operation, in the city of Louisville, a planing-machine, &c., which machine is, in all its material parts, substantially like and upon the plan of the machine of the complainants, and persists in using the same.

The defendant, James Wilson, answered the bill, substantially denying most of the material allegations contained in it. The other defendants answered, by denying that they had any interest in the machine.

The court granted an injunction, enjoining the defendant, James Wilson, from using the machine.

Afterwards, an application was made to the court, on behalf of the complainants, for a rule upon the defendant, James Wilson, to show cause why an attachment should not be issued against him for a violation of the injunction, which was accordingly granted.

The defendant showed cause by affidavit, in which he affirms that immediately on the service of the injunction he had ceased to use the machine mentioned in the bill, and conformed himself to the order of the court, and that he had purchased and set up Bicknell's planing

Statement of the case.

machine, which he was using, and which was substantially different from the machine of the complainants.

Much testimony was taken in the court below, on the question whether the machine which the defendant had substituted and was using was, in all its material and substantial parts, like Woodworth's, which it is not material to refer to more particularly. A great deal of testimony was also taken, for the purpose of showing that Woodworth was not the original inventor of the complainants' machine, which it is also not necessary to recite.

The cause afterwards came to a hearing on the merits, upon the pleadings and proofs, and also upon the rule previously granted against the defendant, to show cause why an attachment should not issue for a violation of the injunction, and, after consideration, the court dissolved the injunction and dismissed the bill, and discharged the rule to show cause, with costs.

As the opinion of the court refers, in general terms, to the interest of Woodworth under the assignment, as a justification for his being joined as a party in the suit, it is proper to set forth the assignment, which was as follows:

"Transfer from Woodworth, Administrator, &c., to E. V. Bunn.

"Whereas, William Woodworth, now deceased, did, in his lifetime, obtain letters patent, issued under the great seal of the United States, bearing date the 27th day of December, 1828, giving and granting to him, the said Woodworth, his heirs, administrators, and assigns, for and during the term of fourteen years from the date of the said letters patent, the full and exclusive right and liberty of making, constructing, using, and vending to others to be used a certain improved method for planing, tonguing, grooving, and cutting into mouldings, or either plank, boards, or any materials, and for reducing the same to an equal width and thickness, and also for facing and dressing brick, and cutting mouldings in or facing metallic, mineral, or other substances;

"And whereas, William W. Woodworth, administrator of said William Woodworth, hath applied for and obtained an extension of said letters patent for the term of seven years from and after the expiration of said patent, to wit, the 27th day of December, 1842, pursuant to an act of Congress in such case made and provided, and hath a certificate of said extension annexed to said patent, signed by the Commissioner of Patents, under the great seal of the Patent Office of the United States, and dated November 16th, A. D. 1842; and whereas, E. V. Bunn, of the city of Louisville, in the State of Kentucky, batlı

Statement of the case.

fully viewed, examined, and considered for himself the said improvement, and, of his own motion, hath requested and desired the said William W. Woodworth, administrator of said William Woodworth, deceased, to give a license and permission, in writing, for constructing and using machines on the said improved plan in the city of Louisville aforesaid, including the district of country within ten miles of said city, and in no other city, town, or place in the United States, or the territories thereof, on the conditions hereinafter mentioned, and have offered to pay him the sum of fifteen hundred dollars for such license and consent in writing, with which request and desire the said William W. Woodworth, administrator of William Woodworth, deceased, has agreed to comply:

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Now, know all men by these presents, that the said W. W. Woodworth, administrator of William Woodworth, deceased, in consideration of the said sum of fifteen hundred dollars, secured to be paid to him, the said William W. Woodworth, administrator of William Woodworth, deceased, doth hereby give his full consent and permission, in writing, and license to the said E. V. Bunn, and to his executors, administrators, and assigns, to construct and use, during the said extension of the aforesaid patent, ten planing-machines on the improved plan aforesaid, within the city of Louisville, and including the district of country within ten miles of said city, and in no other city, town, or place within the United States or the territories thereof; and also, within said limits, to dispose of the plank or other things dressed and prepared in the said machines. And he doth also hereby authorize and empower the said E. V. Bunn, and his executors, administrators, and assigns, in the name of said Woodworth, administrator aforesaid, or in his own name, to commence and prosecute to final judgment any suit or suits against any person or persons who shall construct or use the said improvements within the said limits, contrary to the true meaning and intent of the aforesaid letters patent, and the extension thereof, and the law in such case made and provided; and to receive for his own benefit, and at his own proper costs and charges, any penalty or penalties which he may recover. And, in consideration of the premises, it is hereby covenanted and agreed, by and between the said William W. Woodworth, administrator of William Woodworth, deceased, his executors, administrators, and assigns, of the one part, and the said E. V. Bunn, his executors, administrators, and assigns, of the other part, as follows, namely:

"1st. That the said William W. Woodworth, administrator of William Woodworth, deceased, his executors or administrators, during the terms aforesaid, shall not, nor with themselves, construct or use, nor