Argument for the appellant. after the expiration of that term, and during the new term for which an extension had been granted by Congress. 2. If he could not do so under the deeds as set forth in the pleadings, he could introduce parol evidence to show what he alleged in his answer, and offered to prove, as to the license intended to have been executed by Bloomer on the 10th January, 1848. Messrs. Seward, Norton, and Blatchford, for the appellant, Bloomer: 1. The intent with which the agreement was made is but a convertible term for its legal operation, and that legal operation is to be affixed by law to the language used by the parties, irrespective of the intent with which they used such language. The inquiry never arises upon the evidence, "what did the parties intend to do?" if the written agreement which they made is susceptible of legal interpretation. The conclusion is that they intended just what the law interpreting their agreement says that they have done. If this rule be so, it excludes from the consideration of the court the parol evidence introduced by the respondent, and leaves for the adjudication of the court the single question of law, viz: "Has the respondent, under these instruments, either by their proper interpretation or by operation of general law, the right to continue to use, during the extension of the patent by Congress, the three machines which he constructed and was lawfully in use of during the extension by the Commissioners?" 2. The fact that the subject of the contract is a right in or an interest under a patent does not take the case out of the law applicable to the law of contracts generally. The owner of a patent may make any agreement with regard to its enjoyment that he may make in regard to any other species of property. It is competent, therefore, for the owner of a patent right to carve out of his entire monopoly such fractional interest therein, either as to absolute right, or as to territorial extent, or as to duration of right, as he may see fit. Applying this principle, it appears that the respondent never acquired, by voluntary grant from any of the owners of either the original or extended patent, any right to continue to use the thing patented during the extension of the patent by Congress. If there be language which can define the intent of the grantor to be that he parts with a right under his patent for a specified number of years only, that language will be found in both of the instruments under which the respondent was rightfully in use of his three ma Argument for the appellant. chines during the first extension of the patent. In Exhibit A, the first instrument (that of 2d June, 1843) by the administrator to William Lippincott, the respondent's assignor, the grant was of a "right and license to construct, use, and vend to others to construct and use, during the said extension of the aforesaid patent,' that extension being the one granted by the Commissioners, and which expired on the 27th of December, 1849. In the confirmatory instrument to the respondent, of the 13th of April, 1846, (known as Exhibit B,) which was intended to convey the right under the amended specification attached to the reissued patent, the language is, "doth license and empower for the term of time for which the patent was extended by the Board of Commissioners hereinbefore referred to, being for the term of seven years, and no longer, from the expiration of the original term of fourteen years." Probably Bloomer v. McQuewan, 14 Howard, 550, decided by this court, will be relied on to support an opposite view. But we submit, first, that that case is inapplicable, and second, that it is not, under the circumstances of its decision, a binding authority. I. The act of Congress places the case in the position in which it would have been had the patent been originally granted for twenty-eight years. If it had been so granted, what right would the respondent have acquired by virtue of Exhibits A and B, executed respectively in 1843 and 1846? Clearly the beneficial enjoyment of the patent for the period therein specified, expiring on the 27th of December, 1849, and nothing other or beyond. If he acquired any other or further right, he must have acquired it by virtue of some general law, and not by virtue of the contract, or of the act extending the patent. The respondent did not know, in 1843, when the first license was granted, that the patent would be extended by act of Congress, but he knew that it might be. He did know, in 1846, when the second license was executed, that the patent had been extended; and he accepted an instrument on that date, which expressed, by the use of proper language, the intention of the grantor to terminate the right granted on the 27th day of December, 1849. The respondent never occupied, during the first term of the patent, the position of the defendant in Bloomer v. McQuewan; that is, he was not an "assignee" or "grantee" during the original term of the patent, of the right to use the thing patented. By the patent act of 1836, sec. 18, it is provided that the benefit of the renewal by the Commissioner shall extend "to assignees and grantees of the right to use the thing patented, to the extent of Argument for the appellant. their respective interests therein." In Wilson v. Rousseau, 4 Howard, 646, it was the opinion of a majority of this court that without this provision "all rights of assignees or grantees, whether in a share of the patent, or to a specific portion of the territory held under it, terminate at the end of the fourteen years, and become reinvested in the patentee by the new grant." And, in construing this very act of 1845, Nelson, J., said in one case, Gibson v. Gifford, 1 Blatchford, 529: "If the extension for the second term had been absolute; that is, if there had been no reservation in the general act of 1836 in favor of assignees, as there is not in the special act of 1845, the court would not have entertained a doubt that the exclusive right to the invention during the second term would have been vested in the administrator." So, also, in another case, Gibson v. Cook, 2 Blatchford, 144, where the assignments were similar to Exhibits A and B, he held that the defendant had no right to continue to use the machines under the extension by act of Congress. This view has been confirmed in other circuits.* II. But it is submitted that Bloomer v. McQuewan, should be reexamined. The opinion of the court in that case was pronounced by the present chief justice, and was concurred in by Justices Catron, Daniel, and Grier. Justices Nelson and McLean dissented. Justices Wayne and Curtis did not sit. So that the decision was really that of less than half of the court, there having been one vacancy by the death of Justice McKinley. Justice McLean, at the close of his dissenting opinion, says: "Sustained by the authority of seven justices of this court, and by the argument of the Supreme Court above cited, which I think is unanswerable, I shall deem it to be my duty to bring the same question now decided, when it arises in my circuit, for the consideration and decision of a full bench." It cannot be presumptuous to ask the court to give to the question a new investigation, in order that it may be submitted for the consideration and decision of a full bench." The counsel then examined the decision on principle and authority. *In Bloomer v. Stolley, 5 McLean, 158, McLean, J., held that the defendant in that case acquired no right, under the act of Congress extending Woodworth's patent, to continue to use the machine which he had rightfully used during the second term of the patent. In Mason v. Talman, (decided in Rhode Island, July, 1850,) Woodbury and Pitman, JJ., followed the decision of Nelson and McLean, JJ., upon this point. The point was similarly decided by McKinney and McCaleb, JJ, in Bloomer v. Vaught, (in Louisiana, February, 1850,) by Ware, J., in Woodworth v. Barber, (in Maine, April, 1850,) and by Sprague, J., in Woodworth v. Curtis, (in Massachusetts, January. 1850.) Opinion of the court. Mr. Justice CLIFFORD, after stating the case, delivered the opinion of the court. Counsel of the complainant concede that the machines were constructed and put in operation by the consent and license of the assignees of the patentees, and that the respondent had the full right to continue to use and operate the same throughout the entire period of the extension granted by the Commissioner of Patents. But they deny that he had any right to continue to use or operate them under the second extension, which was granted by the act of Congress. All of those machines were constructed and put in operation before the act of Congress was passed, and of course under an authority founded upon the patent as it existed at the time the authority was conferred. Regarding the transaction in that point of view, the argument is, that the respondent could not lawfully continue to use and operate the machines under the extension granted by Congress, inasmuch as such a use of the invention was not in the contemplation of the parties when the respondent was authorized to construct them and put them in operation. Two principal defenses were set up by the respondent in the court below. First, he insisted that inasmuch as he constructed the machines and put them in operation under the authority of the patentee or his assigns, with the right to continue to use and operate them during the entire term of the patent as it was then granted, he cannot now be deprived of the right to use the property which he was thus induced to purchase, and which he in that manner lawfully acquired. Secondly, he insisted that the complainant, at the time the respondent transferred to him the right he acquired under the assignment to him of the 10th of April, 1846, agreed that he, the complainant, would execute to him, the respondent, a deed of assignment of the right to the extension in question, so far as respects the three machines now in controversy; and he insisted that parol proofs were admissible and sufficient to establish the fact of such an agreement. On the other hand, the complainant denies that any such agreement was ever made, and he also insists that parol proofs are not admissible to establish such a theory. Confessedly, the latter question is one of difficulty, under the circumstances, but it is wholly unnecessary to decide it in this case, as the respondent was and is clearly entitled to judgment upon the other ground. He constructed his machines, or caused them to be constructed, under the authority of the patentee or his assigns, and consequently must be regarded in the same light as a grantee or Opinion of the court. assignee under those who had the legal control of the patent. Builders of machines, under such circumstances, have the same rights as grantees or assignees. When the respondent had purchased the right to construct the machines and operate them during the lifetime of the patent as then existing, and had actually constructed the machines under such authority, and put them in operation, he had then acquired full dominion over the property of the machines, and an absolute and unrestricted right to use and operate them until they were worn out. Patentees acquire the exclusive right to make and use, and vend to others to be used, their patented inventions for the period of time specified in the patent, but when they have made and vended to others to be used one or more of the things patented, to that extent they have parted with their exclusive right. They are entitled to but one royalty for a patented machine, and consequently when a patentee has himself constructed the machine and sold it, or authorized another to construct and sell it, or to construct and use and operate it, and the consideration has been paid to him for the right, he has then to that extent parted with his monopoly, and ceased to have any interest whatever in the machine so sold or so authorized to be constructed and operated. Where such circumstances appear, the owner of the machine, whether he built it or purchased it, if he has also acquired the right to use and operate it during the lifetime of the patent, may continue to use it until it is worn out, in spite of any and every extension subsequently obtained by the patentee or his assigns. Provision is made by the eighteenth section of the act of the 4th of July, 1836, for the extension of patents beyond the time of their limitation. By the latter clause of that section the benefit of such renewal is expressly extended to assignees and grantees, of the right to use the thing patented, to the extent of their respective interests therein. 5 Stat. at Large, 125. Under that provision it has repeatedly been held by this court that a party who had purchased and was using a patented machine, during the original term for which the patent was granted, had a right to continue to use the same during the extension. Wilson v. Rousseau, 4 Howard, 646. Founded as that rule is upon the distinction between the grant of the right to make and vend the machine, and the grant of the right to use it, the justice of the case will always be obvious, if that distinction is kept in view and the rule itself is properly applied. Purchasers of the exclusive privilege of making or vending the |