Opinion of the court. Gaylord, for $1,000, a patent for making or bending horseshoes, claimed by Tolles as his invention, of which Gaylord became the owner of an undivided half, by assignment from Tolles, before the latter obtained his patent, in 1834. In the agreement for the purchase, it is recited that the patent having been lost, a new patent was issued to Tolles in May, 1844. The view taken by Winslow and Horner of their purchase of that patent is shown by covenants in the agreement. It is, that in case it shall at any time appear, by the decision of any court having competent jurisdiction, that the patents conveyed to Winslow and Horner were not valid and effectual to secure to them the exclusive privileges thereby granted, whether for the reason that Tolles was not the original inventor of the machine, or otherwise, then, that the purchase-money was to be returned to Horner and Winslow, with interest from the time it was received, both Tolles and Gaylord being only responsible for the portions of the money that they might receive, Gaylord guaranteeing to the purchasers one hundred dollars of the three hundred and seventy-five dollars which, it appears, he did receive from Mr. Winslow, Gaylord having on the same day received from him six hundred and seventyfive dollars. Such was the claim of the defendants for a patent for bending horseshoes, and no more. The defendants had the right to buy such a patent, with an undertaking to pay the expenses of a lawsuit, if they pleased to do so. And they had a right to use the patent which they bought, if it had really been obtained, and was not an infringement of another patent. But having shown their own apprehension of its invalidity, and provided that they were to lose nothing by it, in case it should prove to be the right which they asserted under it in the agreement of 14th of October, 1845, can only be viewed by us as a relinquishment of a very doubtful claim to make the patent horseshoe, to the exclusive claim made by Burden, to make them under his patent, which formed an inducement with the latter to enter into the release contained in that agreement. As to the circumstance out of the agreement, upon which the defendants state formed in fact the consideration, it is only necessary to say, it sufficiently appears that the undivided half of the dock which they bought from the appellants was fully worth the sum paid for it when the purchase was made, and therefore the price given cannot be a consideration for anything else. We have so far construed the agreement from what is expressed in it, in connection with the claims made by the parties in the suit which Burden agreed to discontinue. There are other reasons which would bring us to the same conclusion. Opinion of the court. Though no form has been prescribed, either for assignments of patents or for licenses to use them, we have judicial decisions concerning both, which are to determine what language will make either, and how they are to be distinguished from each other. The clause of the agreement from which the defendants wish it to be inferred that they have a right to use Burden's bending lever, gives nothing definitely. The claim made by them in their answer is uncertain. It is difficult to distinguish whether they mean to claim by assignment or by a license; and when it was urged in the argument that they did so by license, it was equally uncertain whether they did so upon a claim which they might assign or use for others who might become owners in their factory, or which they could only personally use without being transmissible by them to others. The difference is well understood. A mere license to a party, without having his assigns, or equivalent words to them, showing that it was meant to be assignable, is only the grant of a personal power to the licensees, and is not transferable by him to another. Curtis on Patents, sec. 198; 2 Story, 525, 554. It is true, that in the argument the claim was for a license to use Burden's bending lever; but to what extent, or where or for what time, was not said; nor can it be collected from their answer. Such uncertainties we cannot affirm of an agreement which definitely states what they may do. Further, we cannot adopt the construction of the agreement contended for by the defendants, because they gave no such consideration for such an interest in Burden's patent. We do not say an inadequate one, but no consideration; we can find none in the agreement, nor any in what is said in their answer to have been a consideration. It has already been shown that the dock bought by them from the appellants could not have been any part of a consideration, because the proofs in the cause show that their use of it is a convenience in their business, and that the interest which they acquired in that property, was fully worth the price given by them for it. In addition to what has already been said con cerning the relinquishment of the horseshoe manufacture, or that Burden might manufacture them, and that they would not, we cannot see how that, as a part of the agreement, can be made by any implication to mean more than this: that it was a surrender to the exclusive claim of Burden to make them of a very equivocal right upon their part to do so, for the discontinuance of the pending suit for the allowance to them to make brad-headed spike, which it was the purpose of the suit to prevent, and for the releases mutually given against any future claim for past violations of the patent-rights claimed by them in their pleadings. We think, from the agreement, that Opinion of the court. such was the intention of the parties to it, notwithstanding the declaration of the defendants that it was otherwise. We do so, because there is no proof of it in the case, and because it is not permitted to a party to control a written agreement by parol testimony of declarations or conversation, at the time it was completed or before, which would contradict, add to, or alter the written agreement, either in the case of a latent or patent ambiguity, though in either, collateral facts, and the circumstances in which the parties were placed when the agreement was made, may be given in evidence. In the first case, to ascertain something extrinsic, or matter out of the instrument, where there is no ambiguity from the language of it; and in the other, when from defective terms the intention of the parties may not be collected from them. In this agreement, we can see no such ambiguity of expression to make it doubtful, or anything extrinsic connected with it to make it uncertain. The proofs in this case disclose that Burden's bending lever is a valuable invention; so much so, that the appellants gave to him for the assignment of it, with its improvements, and for the assignment of the horseshoe patent, thirty per cent. upon the net gains of the manufacture of both, with a like interest in the value of all the machinery of both which might be on hand when the contract shall be at an end, and with the same interest in all the real estate, the additions and improvements of it, which shall be bought and made out of the earnings of the assigned machinery; with this further stipulation, upon the part of the appellant, that his interest, as they have been stated, should commence six months before the date of his assignments. With such advantages, it cannot be supposed that it was understood by the parties to the agreement of 14th of October, 1845, that Burden meant to put a rival establishment in possession of an interest in his patent equal to that of the appellants, for making bradheaded spike, and that for nothing. Before concluding, we will remark that there is no proof in the cause to maintain the averment in the answer of the defendants, that they used the bending lever of Burden with his knowledge and that of the appellants, from the date of the agreement until the suit was brought, without any objection or complaint from either of them. In every point of view which we can take of this case, we think that the defendants have infringed the patent for making hook or brad headed spike with Burden's bending lever. We shall direct the decree of the court below to be reversed, and shall order a perpetual injunction to enjoin the defendants from using the machine with Burden's bending lever in the manufacture of brad-headed spike, Syllabus. and shall remand the case to the court below, with directions for an account to be taken, as is prayed for by the appellants. Mr. Chief Justice TANEY and Mr. Justice NELSON dissented. ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the Northern District of New York, and was argued by counsel; on consideration whereof, it is now here ordered, adjudged, and decreed by this court, that the decree of said Circuit Court in this cause be, and the same is hereby, reversed with costs, and that this cause be, and the same is hereby, remanded to the said Circuit Court, with instructions to enjoin the defendants perpetually from using the improved machinery with the bending lever for making hook and brad headed spikes, patented to Henry Burden the 2d of September, 1840, and assigned to the complainant as set forth in complainant's bill, and to enter a decree in favor of the complainants, for the use and profits thereof, upon an account to be stated by a master, under the direction of the said Circuit Court, as is prayed for by the complainants, and for such further proceedings to be had therein, in conformity to the opinion of this court, as to law and justice may appertain. HORACE C. SILSBY, WASHBURN RACE, ABLE DOWNS, HENRY HERRION, AND CHARLES D. THOMPSON v. ELISHA FOOTE. (14 Howard, 218.) 1. Upon a trial in New York, a juror became ill, and was discharged before any evidence was given, and before the plaintiff's counsel had concluded his opening address. The court ordered another juror to be sworn, and proceeded with the trial. The defendant cannot object to this. It is the practice in New York, and the Circuit Court had a right to follow it. 2. The court having erroneously refused to allow the plaintiff to offer a paper in evidence as a disclaimer of part of a patent, afterwards refused to allow the defendants to offer the same paper in evidence for the purpose of prejudic ing the plaintiff's rights. This last refusal was correct. The reason given was erroneous; but this is not a sufficient cause for reversing the judgment. 3. The courts of the United States have not the power to order a nonsuit against the wishes of the plaintiff. 4. Under a notice given by the defendant, that the invention claimed by the plaintiff was described in Ure's Dictionary of Arts, Manufactures, and Mines, and had been used by Andrew Ure, of London, it was not competent to give in evidence a very large book. The place in the book should have been speci Opinion of the court. 5. Nor, under the notice, was the book competent evidence that Andrew Ure, of London, had a prior knowledge of the thing patented. The notice does not state the place where the same was used. 6. One of the specifications of the patent being for a combination of certain parts of mechanism necessary to produce the desired result, it was proper for the court to instruct the jury that the defendants had not infringed the patent, unless they had used all the parts embraced in the plaintiff's combination; and the jury were to find what those parts were, and whether the defendants had used them. 7. When a claim does not point out and designate the particular elements which compose a combination, but only declares, as it properly may, that the combination is made up of so much of the described machinery as effects a particular result, it is a question of fact which of the described parts are essential to produce that result, and to this extent, not the construction of the claim, strictly speaking, but the application of the claim, should be left to the jury. THIS case was brought up by writ of error from the Circuit Court of the United States for the Northern District of New York. The facts are stated in the opinion of the court. It was argued by Mr. Seward, for the plaintiffs in error, and by Mr. Foote, in proper person, for the defendant in error. Mr. Justice CURTIS delivered the opinion of the court. This is an action on the case for the violation of a patent-right granted to the defendant in error on the 26th day of May, 1842, for "a new and useful improvement in regulating the draft of stoves." On the trial in the Circuit Court for the Northern District of New York, the defendants took exceptions to the rulings of the district judge who presided at the trial, and have brought the case here by a writ of error. The first exception shows the following facts: After the counsel for the plaintiff had begun his opening address to the jury, a juror became ill, applied to the court to be discharged, and was discharged from the panel on account of physical inability to sit on the residue of the trial. Thereupon the court ordered another juror to be drawn. and sworn, and the panel being thus full, the trial proceeded, and the plaintiff's counsel concluded his address. The plaintiff assented to this proceeding; the defendant objected, and excepted to the order of the court. We think it was not erroneous for the presiding judge to treat the physical inability of the juror as simply creating a vacancy on the panel, and proceeding to fill it in the usual way, by having a twelfth juror drawn and sworn. We understand it to have been the practice of the courts of the State of New York so to treat such a withdrawal |