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WILSON V. ROUSSEAU, 45 U. S. 646 (1846)

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U.S. Supreme Court

Wilson v. Rousseau, 45 U.S. 4 How. 646 646 (1846)

Wilson v. Rousseau

45 U.S. (4 How.) 646

Syllabus

The eighteenth section of the patent act of 1836 authorized the extension of a patent on the application of the executor or administrator of a deceased patentee.

Such an extension does not inure to the benefit of assignees under the original patent, but to the benefit of the administrator (when granted to an administrator), in his capacity as such. But those assignees who were in the use of the patented machine at the time of the renewal have still a right to use it.

The extension could be applied for and obtained by the administrator, although the original patentee had, in his lifetime, disposed of all his interest in the then existing patent. Such sale did not carry anything beyond the term of the original patent.

A covenant by the patentee, made prior to the law authorizing extensions, that the covenantee should have the benefit of any improvement in the machinery or alteration or renewal of the patent did not include the extension by an administrator under the act of 1836. It must be construed to include only renewals obtained upon the surrender of a patent on account of a defective specification. Parties to contracts look to established and general laws, and not to special acts of Congress.

A plaintiff, therefore, who claims under an assignment from the administrator can maintain a suit against a person who claims under the covenant.

An assignee of an exclusive right to use two machines within a particular district can maintain an action for an infringement of the patent within that district even against the patentee.

In the case of Woodworth's planing machine, the patent granted to the administrator was founded upon a sufficient specification and proper drawings, and is valid.

The decision of the Board of Commissioners, to whom the question of renewal is referred by the act of 1836, is not conclusive upon the question of their jurisdiction to act in a given case.

The Commissioner of Patents can lawfully receive a surrender of letters patent for a defective specification and issue new letters patent upon an amended specification, after the expiration of the term for which the original patent was granted and pending the existence of an extended term of seven years. Such surrender and renewal may be made at any time during such extended term.

This case and the three subsequent ones, namely Wilson v. Turner, Simpson v. Wilson, and Woodworth & Bunn v. Wilson, were argued together, being known as The Patent Cases. Many of the points of law involved were common to them all, and those which were fully argued in the first case which came up were but incidentally touched in the discussion of the subsequent cases. chanroblesvirtualawlibrary

Page 45 U. S. 647

They all related to the rights which were derived under a patent for a planing machine taken out by Woodworth and renewed and extended by his administrators. The validity of the original patent was questioned only in one case, namely that which came from Kentucky, which was the last argued. There were four cases in all, namely one from New York, one from Maryland, one from Louisiana, and one from Kentucky. In the course of the argument, counsel referred indiscriminately to the four records, as some documents were in one which were not to be found in another.

The cases will be taken up and reported seriatim, and the documents which are cited in the first will not be repeated in the others.

The first in order was the case from New York, the titling of which is given at the head of this report.

It came up from the Circuit Court of the United States for the Northern District of New York, on a certificate of division in opinion.

On 26 November, 1828, William Woodworth presented the following petition.

"To the Honorable Henry Clay, Secretary of State of the United States"

"The petition of William Woodworth, of the City of Hudson, in the County of Columbia and State of New York, respectfully represents: "

"That your petitioner has invented a new and improved method of planing, tonguing, grooving, and cutting into mouldings, or either, plank, boards, or any other material and for reducing the same to an equal width and thickness, and also for facing and dressing brick and cutting mouldings on, or facing, metallic, mineral, or other substances, not known or used before the application by him, the advantages of which he is desirous of securing to himself and his legal representatives. He therefore prays that letters patent of the United States may be issued granting unto your petitioner, his heirs, administrators, or assigns, the full and exclusive right of making, constructing, using, and vending to others to be used, his aforesaid new and improved method, agreeably to the acts of Congress in such case made and provided, your petitioner having paid thirty dollars into the Treasury of the United States, and complied with the other provisions of the said acts."

"WILLIAM WOODWORTH"

"November 26, 1828"

On 4 December, 1828, Woodworth executed to James Strong the following assignment.

"Whereas I, William Woodworth, of the City of Hudson in the State of New York, heretofore, to-wit, on 13

Page 45 U. S. 648

September, 1828, assigned and transferred, for a legal and valuable consideration, the one equal half of all my right, title, claim, and interest in and to the invention or improvement mentioned and intended in the foregoing petition, oath, and specification, to James Strong, of the City of Hudson."

"And whereas, also, the subjoined assignment is intended only to convey and assign the same interest transferred and assigned in the assignment of 13 September above mentioned, without any prejudice to my one equal half part of said invention or improvement, which is expressly reserved to myself and my legal representatives."

"Now know all men that I, the said William Woodworth, for and in consideration of the sum of ten dollars, and other valuable considerations me moving, have and do hereby, for myself and legal representatives, give, assign, transfer, and assure to the said James Strong and his legal representatives the one full and equal half of all my right, title, interest, and claim in and to my new and improved method of planing, tonguing, grooving, and cutting into mouldings, either plank, boards, or any other material, and for reducing the same to an equal width and thickness, and also for facing and dressing brick, and cutting mouldings on, or facing, metallic, mineral, or other substances, mentioned and intended to be secured by the foregoing petition, oath, and specification, together with all the privileges and immunities, as fully and absolutely as I do or shall enjoy or possess the same, to have and to hold and enjoy the same, to the said James Strong, and his legal representatives, do or may."

"In witness whereof, I have hereunto set my hand and seal, 4 December, 1828."

"WILLIAM WOODWORTH [SEAL]"

"Witnesses:"

"HENRY EVERTS"

"DAVID GLEASON"

On 6 December, 1828, Woodworth took the following oath.

"State of New York, Rensselaer County, ss.: "

"On this sixth day of December, A.D. 1828, before the subscriber, a justice of the peace in and for the County of Rensselaer aforesaid, personally appeared the aforesaid William Woodworth, and made solemn oath, according to law, that he verily believes himself to be the true and original inventor of the new and improved method, above described and specified, for planing, tonguing, grooving, and cutting into mouldings, or either, plank, boards, or any other material, and for reducing the same to an equal width and thickness; and also for facing and dressing brick,

Page 45 U. S. 649

and cutting mouldings on, or facing, metallic, mineral, or other substances, and that he is a citizen of the United States."

"JOHN THOMAS, Justice of the Peace"

The above documents appear to be recorded in the third volume of Transfers of Patent Rights, pages 155, 156, in the Patent Office of the United States.

On 27 December, 1828, a patent was issued as follows.

"Letters Patent to W. Woodworth"

"The United States of America to all to whom these letters patent shall come: "

"Whereas William Woodworth, a citizen of the United States, hath alleged that he has invented a new and useful improvement in the method of planing, tonguing, grooving, and cutting into mouldings, or either, plank, boards, or any other material, and for reducing the same to an equal width and thickness; and also for facing and dressing brick, and cutting mouldings on, or facing, metallic, mineral, or other substances, which improvements, he states, have not been known or used before his application; hath made oath that he does verily believe that he is the true inventor or discoverer of the said improvement; hath paid into the Treasury of the United States the sum of thirty dollars, delivered a receipt for the same, and presented a petition to the Secretary of State, signifying a desire of obtaining an exclusive property in the said improvements, and praying that a patent may be granted for that purpose. These are therefore to grant, according to law, to the said William Woodworth, his heirs, administrators, or assigns, for the term of fourteen years from 27 December, 1828, the full and exclusive right and liberty of making, constructing, using, and vending to others to be used, the said improvement, a description whereof is given in the words of the said William Woodworth himself, in the schedule hereto annexed, and is made a part of these presents."

"In testimony whereof, I have caused these letters to be made patent, and the seal of the United States to be hereunto affixed. Given under my hand, at the City of Washington, this 27 December, in the year of our Lord 1828, and of the independence of the United States of America the fifty-third."

"[Signed] J. Q. ADAMS"

"By the President"

"[Signed] H. CLAY, Secretary of State"

"Certificate of Wm. Wirt, Attorney General of the United States."

"City of Washington, to-wit: "

"I do hereby certify that the foregoing letters patent were delivered

Page 45 U. S. 650

to me on 27 December, in the year of our Lord 1828, to be examined; that I have examined the same and find them conformable to law, and I do hereby return the same to the Secretary of State within fifteen days from the date aforesaid, to-wit, on this 27 December in the year aforesaid."

"WM. WIRT"

"Attorney General of the United States"

"Schedule"

"The schedule referred to in these letters patent and making part of the same, containing a description, in the words of the said William Woodworth himself, of his improvement in the method of planing, tonguing, grooving, and cutting into mouldings, or either, plank, boards, or any other material, and for reducing the same to an equal width and thickness, and also for facing and dressing brick and cutting mouldings on, or facing, metallic, mineral, or other substances."

"The plank, boards, or other material, being reduced to a width by circular saws or friction wheels, as the case may be, is then placed on a carriage, resting on a platform, with a rotary cutting wheel in the center, either horizontal or vertical. The heads or circular plates, fixed to an axis, may have one of the heads movable, to accommodate any length of knife required. The knife fitted to the head with screws or bolts, or the knives or cutters for moulding fitted by screws or bolts to logs, connecting the heads of the cylinder, and forming with the edges of the knives or cutters a cylinder. The knives may be placed in a line with the axis of the cylinder or diagonally. The plank or other material resting on the carriage may be set so as to reduce it to any thickness required, and the carriage, moving by a rack and pinion, or rollers, or any lateral motion, to the edge of the knives or cutters on the periphery of the cylinder or wheel, reduces it to any given thickness. After passing the planing and reducing wheel, it then approaches, if required, two revolving cutter wheels, one for cutting the groove and the other for cutting the rabbets that form the tongue; one wheel is placed directly over the other, and the lateral motion moving the plank, or other material, between the grooving and rabbeting wheels, so that one edge has a groove cut the whole length, and the other edge a rabbet cut on each side, leaving a tongue to match the groove. The grooving wheel is a circular plate fixed on an axis, with a number of cutters attached to it to project beyond the periphery of the plate, so that when put in motion it will perform a deep cut or groove, parallel with the face of the plank or other material. The rabbeting wheel, also of similar form, having a number of cutters on each side of the plate, projecting like those on the grooving wheel, cuts the rabbet on the side of the edge of the plank and leaves the tongue or match for the

Page 45 U. S. 651

groove. By placing the planing wheel axis and cutter knives vertical, the same wheel will plane two planks or other material in the same time of one, by moving the plank or other material opposite ways, and parallel with each other against the periphery of the planing or moulding wheel. The groove and tongue may be cut in the plank or other material at the same time, by adding a grooving and rabbeting wheel."

"Said William Woodworth does not claim the invention of circular saws or cutter wheels, knowing they have long been in use, but he claims as his invention the improvement and application of cutter or planing wheels to planing boards, plank, timber, or other material; also his improved method of cutters for grooving and tonguing, and cutting mouldings on wood, stone, iron, metal, or other material, and also for facing and dressing brick, as all the wheels may be used single and separately for moulding, or any other purpose before indicated. He also claims as his improved method the application of circular saws for reducing floor plank and other materials to a width."

"Dated Troy, December 4, 1828"

"WILLIAM WOODWORTH"

"HENRY EVERTS"

"D. S. GLEASON"

"Witnesses"

On 25 April, 1829, one Uri Emmons obtained a patent for a new and useful improvement in the mode of planing floor plank, and grooving, and tonguing, and straightening the edges of the same, planing boards, straightening and planing square timber &c., by machinery, at one operation, called the cylindrical planing machine. The said letters patent, and specification attached thereto, being in the following words and figures.

"Uri Emmons' Patent"

"United States of America to all to whom these letters patent shall come: "

"Whereas, Uri Emmons, a citizen of the United States, hath alleged that he has invented a new and useful improvement in the mode of planing floor plank and grooving and tonguing the edges of the same, planing boards, straightening and planing square timber &c., by machinery, at one operation, called 'the cylindrical planing machine,' which improvement he states has not been known or used before his application, hath made oath that he does verily believe that he is the true inventor or discoverer of the said improvement, hath paid into the Treasury of the United States the sum of thirty dollars, delivered a receipt for the same, and presented a petition to the Secretary of State, signifying a desire of obtaining an exclusive property in the said improvement, and praying that a patent may be granted for that purpose. These are therefore to grant, according to law, to the said Uri Emmons, his

Page 45 U. S. 652

heirs, administrators, or assigns for the term of fourteen years from the twenty-fifth day of April, one thousand eight hundred and twenty-nine, the full and exclusive right and liberty of making, constructing, using, and vending to others to be used, the said improvement, a description whereof is given, in the words of the said Uri Emmons himself, in schedule hereto annexed, and is made a part of these presents."

"In testimony whereof I have caused these letters to be made patent and the seal of the United States to be hereunto affixed."

"Given under my hand at the City of Washington this twenty-fifth day of April in the year of our Lord one thousand eight hundred and twenty-nine and of the independence of the United States of America the fifty-third."

"[SEAL] [Signed] ANDREW JACKSON"

"By the President"

"[Signed] M. VAN BUREN"

"City of Washington, to-wit:"

"I do hereby certify that the foregoing letters patent were delivered to me on the twenty-fifth day of April in the year of our Lord one thousand eight hundred and twenty-nine, to be examined; that I have examined the same, and find them conformable to law, and I do hereby return the same to the Secretary of State, within fifteen days from the date aforesaid, to-wit, on the twenty-fifth day of April in the year aforesaid."

"[Signed] J. MACPHERSON BERRIEN"

"Attorney General of the United States"

"Schedule"

"The schedule referred to in these letters patent, and making part of the same, containing a description, in the words of the said Uri Emmons himself, of his improvement in the mode of planing floor plank, and grooving, and tonguing, and straightening the edges of the same, planing boards, straightening and planing square timber &c., by machinery, at one operation, called the cylindrical planing machine."

"The machinery for the improvement consists:"

"1st. Of a frame of wood or metal."

"2d. Of the gear and fixtures combined and connected together for the above-named operation, the principle of which consists in running the plank, boards, or timber over, under, or at the sides of a cylinder of wood or metal, on which knives are placed, straight or spiral, with their edges exactly corresponding with each other, having from two to twelve knives or edges; also burrs or saws, similar to those used for cutting teeth in brass wheels, to groove and tongue the edge of the boards or plank as they pass through between rollers, or on a carriage, by the surface of the cylinder.

Page 45 U. S. 653

The shape, form, and construction of the above principle may be varied in shape and position, dimensions &c., still the same in substance -- the same principle producing the same effect. I have by experimental operation found that the following mode in form is the best:"

"1st. A frame composed of two pieces of timber, from twelve to eighteen feet long, about six by ten inches broad, placed about fifteen inches apart, framed together with four girths, one at each end, and at equal distances from the center, and flush with the under side. This frame is supported by posts of a proper length, framed into the under side of the above pieces of timber, and braced so as to be of sufficient strength to maintain the operative posts. There is placed a roller in the center, of metal or hard wood, across the frame, the surface of the roller being even with the surface of the frame; directly above and parallel with this roller is hung the cylinder, with two or four spiral edges or knives, six to ten inches diameter, and hung on a cast steel arbor, resting in movable boxes attached to the sides of the frame, so as to set the cylinder up and down from the roller, to give the thickness of the timber to be planed. On each side of the cylinder is placed a pair of feeding rollers of hard wood or metal, the under one of each pair being level with the center one. The upper ones are hung in boxes, which are pressed down with springs or weights, so that when the timber comes between them they will hug and carry it through. These rollers are connected and turned by wheels at a velocity of about twelve feet surface of the roller per minute, the cylinder with two edges to make about two thousand five hundred revolutions per minute, cutting five thousand strokes every twelve feet; this can be varied according to the number of edges, power, and velocity of the different parts. The power is attached to the cylinder by a bolt running on a pulley, on the outward end of the cylinder shaft. Each way from the feeding rollers is placed rollers about two feet apart for the timber to rest on while running through. On one side of the frame is fastened a straight edge to serve as a guide, lined with metal; on the other side, rollers are placed in a piece of timber, which is pressed up to the plank or board to keep it close to the guide or straight edge by a spring. The grooving and tonguing is done by burrs or circular cutters similar to a saw; these burrs are hung on perpendicular spindles, the arbors of which rest in boxes attached to the inward side of the frame, a burr on one side to cut the groove, and on the other is placed two burrs, just as far apart as the thickness of the above one, for cutting the groove. At or near one end of the frame is hung a shaft, with a drum or roller, from which belts pass over to pulleys on each spindle of the burrs or circular cutters, which must have about the same velocity of the cylinder. These burrs are placed on one side of the cylinder, opposite to each

Page 45 U. S. 654

other, so as to cut the tongue to match the groove; on the other side of the cylinder is an arbor parallel with the cylinder, on which is placed circular cutters for planing the edges of the board or plank as they pass through. The cutter on the side next to the guide is stationary on the arbor; the opposite one is movable in the arbor, but fastened with screws to set it for different widths. A belt runs from a pulley on the end of the arbor, outside the frame, to the said drum, as also the same from the cylinder, each having about the same motion. The feeding rollers are put in motion by a belt from the slow part of the driving power. I have also put in operation a carriage for feeding, but rollers save the time of running the carriage back."

"Now what I, the said Uri Emmons, consider and claim as my improvement, and for which I solicit a patent, is as follows, namely:"

"1st. The principle of planing boards and plank with a rotary motion, with knives or edges on a cylinder, placed upon the same, straight or spiral, as before described, which I put in operation at Syracuse, in the County of Onondaga in the State of New York in the early part of the year 1824."

"2d. The burrs for grooving and tonguing, in contradistinction from the mode used by William Woodworth, he using the duckbill cutters."

"3d. The feeding, by running the timber through on a carriage, or between feeding rollers, guided by a straight edge, as before described."

"In testimony that the aforegoing is a true specification of my said improvement as before described, I have hereunto set my hand and seal the eighth day of April in the year of our Lord one thousand eight hundred and twenty-nine."

"[Signed] URI EMMONS"

"Witnesses:"

"THOS. THOMAS"

"SILAS HATHAWAY"

On 16 May, 1829, the said Emmons sold his entire interest in the last-mentioned patent to Daniel H. Toogood, Daniel Halstead, and William Tyack, by the following instrument:

"Deed from Emmons to Toogood, Halstead, and Tyack"

"Whereas Uri Emmons, of the State of New York, machinist, has received letters patent of the United States of America, dated April 25, one thousand eight hundred and twenty-nine, [for] the full and exclusive right and liberty of making, constructing, using, and vending to others to be used, a new and useful improvement in the mode of planing floor plank, and grooving and tonguing, and straightening the edges of the same, planing boards, straightening and planing square timber &c., by machinery, at one operation, called the cylindrical planing machine. "

Page 45 U. S. 655

"Now know all men by these presents that I, Uri Emmons, of the City of New York, in consideration of five dollars to me in hand paid by Daniel H. Toogood, Daniel Halstead, and William Tyack, all of said City of New York, who fully viewed and considered the said improvement and the said patent and specifications therein contained, have granted, sold, and conveyed, and by these presents do grant, sell, and convey, to the said Daniel H. Toogood, Daniel Halstead, and William Tyack, their heirs, executors, administrators, and assigns, the full and exclusive right and liberty derived from the said patent, of making, using, and vending to others to be made, used, and sold, the said improvement within and throughout the United States of America. To have and to hold and enjoy all the privileges and benefits which may in any way arise from the said improvement by virtue of said letters patent. And I do hereby empower the said Daniel H. Toogood, Daniel Halstead, and William Tyack, their heirs, executors, administrators, and assigns, to commence and prosecute to final judgment and execution, at their own cost, any suit or suits against any person or persons who shall make, use, or vend the said improvement, contrary to the intent of the said letters patent and law in such case made and provided, and to receive, for their own benefit, the avails thereof, in such manner as I might do."

"In witness whereof I have hereunto set my hand and seal this sixteenth day of May in the year of our Lord one thousand eight hundred and twenty-nine."

"URI EMMONS [SEAL]"

"Witnesses:"

"THOMAS AP THOMAS"

"ALEX. DEDDER"

"City and County of New York, ss.: "

"Be it remembered that on the sixteenth day of May, in the year of our Lord one thousand eight hundred and twenty-nine, before me personally appeared Uri Emmons, known to me to be the person described in and who executed the within deed, and acknowledged that he executed the same for the purposes therein mentioned, and there being no material alterations, erasures, or interlineations, I allow the same to be recorded."

"THOMAS THOMAS, Commissioner &c."

On 28 November, 1829, the following mutual deed of assignment was executed between Woodworth and Strong, on the one part, and Toogood, Halstead, Tyack, and Emmons, on the other part, by which Woodworth and Strong convey to Toogood, Halstead, and Tyack all their interest in the patent of December 27, 1828, in the following places, namely in the city and County of Albany, in the State of New York; in the State of Maryland, except the western part which lies west of the Blue Ridge; in Tennessee, Alabama, South Carolina, Georgia, the Floridas, chanroblesvirtualawlibrary

Page 45 U. S. 656

Louisiana, Missouri, and the territory west of the Mississippi; and Toogood, Halstead, Tyack, and Emmons conveyed to Strong and Woodworth all their interest in Emmons' patent of 25 April, 1829, for the rest and residue of the United States, by which mutual deed of assignment the parties agreed that any improvement in the machinery, or alteration, or renewal of either patent, such improvement, alteration, or renewal should accrue to the benefit of the respective parties in interest, and might be applied and used within their respective districts.

"Mutual Deed between Woodworth, Strong, Toogood, Halstead, Tyack, and Emmons"

"Know all men by these presents that William Woodworth, now of the City of New York, the patentee of an improved method of planing, tonguing, grooving &c., plank, boards &c., by letters patent from the United States dated December 29, 1828, and James Strong, of the City of Hudson, in the State of New York, the assignee of one equal half of the rights and interests secured by the aforesaid letters patent, of the one part, and Uri Emmons, of the City of New York, the patentee of an improvement in the mode of planing floor plank, and grooving, tonguing, and straightening the edges of the same &c., by letters patent from the United States dated April 25, 1829, and Daniel H. Toogood, Daniel Halstead, and William Tyack, of the City of New York, the assignees, by deed dated 16 May, 1829, of all the rights and interest secured by the last aforesaid patent to said Emmons, of the other part in consideration of the following covenants and agreements, do hereby covenant and agree as follows:"

"First. The said Woodworth and Strong and their assigns have, and hereby do assign to the said Toogood, Halstead, and Tyack and their assigns all their right and interest in the aforesaid patent to William Woodworth, to be sold and used, and the plank or other materials prepared thereby to be vended and used, in the following places, namely in the City and County of Albany in the State of New York; in the State of Maryland, except the western part thereof which lies west of the Blue Ridge; in Tennessee, Mississippi, Alabama, South Carolina, Georgia, the Floridas, Louisiana, and the territory west of the River Mississippi, and not in any other state or place within the limits of the United States or the territories thereof. To have and to hold the rights and privileges hereby granted to them and their assigns for and during the term of fourteen years from the date of the patent, and they are also authorized to prosecute at their own costs and charges any violation of the said patent in the same manner as the patentee, Woodworth, might lawfully do."

"Secondly. The said Emmons, Toogood, Halstead, and Tyack,

Page 45 U. S. 657

in consideration aforesaid, have and hereby do covenant and agree to assign and do assign, for themselves and assigns, to the said Woodworth and Strong and their assigns all their right and interest in the aforesaid patent granted to the said Uri Emmons, to be sold and used, and the plank or other material prepared thereby to be vended and used, in all and singular the rest and residue of the United States and the territories thereof -- that is to say in all places other than in those especially assigned to the said Toogood, Halstead, and Tyack as aforesaid. To have and to hold the said rights and privileges hereby granted to them and their assigns for and during the term of fourteen years from the date of the said letters patent to the said Uri Emmons, and they are also authorized to prosecute, at their own costs and charges, any violation of the said patent, in the same manner as the patentee, Uri Emmons, might lawfully do."

"Thirdly. And the two parties further agree that any improvement in the machinery or alteration or renewal of either patent, such alteration, improvement, or renewal shall accrue to the benefit of the respective parties in interest, and may be applied and used within their respective districts as hereinbefore designated."

"Witness our hands and seals at the City of New York, 28 November, 1829."

"WILLIAM WOODWORTH [SEAL]"

"JAMES STRONG [SEAL]"

"WILLIAM TYACK [SEAL]"

"D. H. TOOGOOD [SEAL]"

"DANIEL HALSTEAD [SEAL]"

"URI EMMONS [SEAL]"

Sealed and delivered, in presence of

THOMAS AP THOMAS

Witness to the signing of Toogood, Tyack, Halstead, and Emmons

Under this mutual assignment, the respective parties and their assignees would possess the following rights, namely, if they claimed under Woodworth's patent, to use the same for fourteen years from 29 December, 1828, that is to say until 29 December, 1842, and if they claimed under Emmons' patent, to use the same for fourteen years from 25 April, 1829, that is to say, until 25 April, 1843.

On one or the other of these days, therefore, if things had remained in the same condition, all rights either in the patentees or their assignees would have ceased as far as respected an exclusive use of the thing patented.

In 1836, Congress passed an act from which the following is an extract, and the construction of which was the chief controversy. Act approved 4 July, 1836, ch. 357, 5 Lit. & Brown's ed. 117, chanroblesvirtualawlibrary

Page 45 U. S. 658

§ 18.

"And be it further enacted that whenever any patentee of an invention or discovery shall desire an extension of his patent beyond the term of its limitation, he may make application therefor in writing to the Commissioner of the Patent Office, setting forth the grounds thereof, and the Commissioner shall, on the applicant's paying the sum of forty dollars to the credit of the Treasury, as in the case of an original application for a patent, cause to be published in one or more of the principal newspapers in the City of Washington, and in such other paper or papers as he may deem proper, published in the section of country most interested adversely to the extension of the patent, a notice of such application, and of the time and place when and where the same will be considered, that any person may appear and show cause why the extension should not be granted. And the Secretary of State, the Commissioner of the Patent Office, and the Solicitor of the Treasury shall constitute a board to hear and decide upon the evidence produced before them, both for and against the extension, and shall sit for that purpose at the time and place designated in the published notice thereof. The patentee shall furnish to the said board a statement in writing, under oath, of the ascertained value of the invention, and of his receipts and expenditures, sufficiently in detail to exhibit a true and faithful account of loss and profit in any manner accruing to him from and by reason of said invention. And if, upon a hearing of the matter, it shall appear to the full and entire satisfaction of said board, having due regard to the public interest therein, that it is just and proper that the term of the patent should be extended, by reason of the patentee, without neglect or fault upon his part, having failed to obtain, from the use and sale of his invention, a reasonable remuneration for the time, ingenuity, and expense bestowed upon the same, and the introduction thereof into use, it shall be the duty of the Commissioner to renew and extend the patent, by making a certificate thereon of such extension, for the term of seven years from and after the expiration of the term, which certificate, with a certificate of said board of their judgment and opinion as aforesaid, shall be entered on record in the Patent Office, and thereupon the said patent shall have the same effect in law as though it had been originally granted for the term of twenty-one years. And the benefit of such renewal shall extend to assignees and grantees of the right to use the thing patented to the extent of their respective interest therein. Provided however that no extension of a patent shall be granted after the expiration of the term for which it was originally issued."

On 3 February, 1839, William Woodworth, the patentee, died, and on 14 February, 1839, William W. Woodworth took out letters of administration upon his estate in the County of New York.

In 1842, William W. Woodworth, the administrator, applied for chanroblesvirtualawlibrary

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an extension of the patent under the above-recited act of 1836, and on 16 November, 1842, the board issued the following certificate.

"In the matter of the application of William W. Woodworth, administrator on the estate of William Woodworth, deceased, in writing to the Commissioner of Patents for the extension of the patent for a new and useful improvement in the method of planing, tonguing, and grooving, and cutting into mouldings, or either, plank, boards, or any other material, and for reducing the same to an equal width and thickness, and also for facing and dressing brick and cutting mouldings on, or facing, metallic, mineral, or other substances, granted to the said William Woodworth, deceased, on 27 December, 1828, for fourteen years from said 27 December."

"The applicant having paid into the Treasury the sum of forty dollars, and having furnished to the undersigned a statement in writing, under oath, of the ascertained value of the invention, and of the receipt and expenditures thereon, sufficiently in detail to exhibit a true and faithful account of loss and profits in any manner accruing to said patentee from or by reason of said invention, and notice of application having been given by the Commissioner of Patents according to law, said board met at the time and place appointed, namely at the Patent Office, on 1 September, 1842, and their meetings having been continued by regular adjournments until this 16 November, 1842, they on that day heard the evidence produced before them both for and against the extension of said patent, and do now certify that upon hearing of the matter, it appears to their full and entire satisfaction, having due regard to the public interest therein, that it is just and proper that the term of said patent should be extended by reason of the patentee's, without neglect on his part, having failed to obtain from the use and sale of his invention a reasonable remuneration for the time, ingenuity, and expense bestowed upon the same, and the introduction thereof into use."

"Washington City, Patent Office, November 16, 1842."

"DANIEL WEBSTER"

"Secretary of State"

"CHAS. B. PENROSE"

"Solicitor of the Treasury"

"HENRY L. ELLSWORTH"

"Commissioner of Patents"

And on the same day, the Commissioner of Patents issued the following certificate.

"Whereas, upon the petition of William W. Woodworth, administrator of the estate of William Woodworth, deceased, for an

Page 45 U. S. 660

extension of the within patent, granted to William Woodworth, deceased, on 27 December, 1828. The Board of Commissioners, under the eighteenth section of the act of Congress approved 4 July, 1836, entitled an act to promote the progress of useful arts, to repeal all acts and parts of acts heretofore made for that purpose, did, on 16 November, 1842, certify that the said patent ought to be extended."

"Now therefore, I, Henry L. Ellsworth, Commissioner of Patents, by virtue of the power vested in me by said eighteenth section, do renew and extend said patent, and certify that the same is hereby extended for the term of seven years from and after the expiration of the first term, namely, 27 December, 1842, which certificate of said Board of Commissioners, together with this certificate of the Commissioner of Patents, having been duly entered of record in the Patent Office, the said patent now has the same effect in law as though the term had been originally granted for the term of twenty-one years."

"In testimony whereof, I have caused the seal of the Patent Office to be hereunto affixed, this 16 November, 1842."

"HENRY L. ELLSWORTH"

"Commissioner of Patents"

On 2 January, 1843, William W. Woodworth, the administrator, filed the following disclaimer.

"To all men to whom these presents shall come, I, William W. Woodworth, of Hyde Park, in the County of Duchess and State of New York, Esq., as I am administrator of the goods and estate which were of William Woodworth, deceased, hereinafter named, send greeting: "

"Whereas letters patent, bearing date on the twenty-seventh day of December, in the year of our Lord eighteen hundred and twenty-eight, were granted by the United States to William Woodworth, now deceased, for an improvement in the method of planing, tonguing, grooving, and cutting into mouldings, or either, boards, plank, or any other material, and for reducing the same to an equal width and thickness; and also for facing and dressing brick, and cutting mouldings on, or facing, metallic, mineral, or other substances. And whereas, before the term of fourteen years, for which the said letters patent were granted, had fully expired, such proceedings were had that, pursuant to the act of Congress in such case made and provided, the said letters patent were renewed or extended for the term of seven years from and after the expiration of the said term of fourteen years, and to the certificate granting the said extension and renewal unto me in my said capacity, bearing date on the sixteenth day of November now last past, and which is duly recorded according to act of Congress in that behalf, reference is

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hereby made, as showing my title and interest in and to the said letters patent."