U.S. Supreme Court
Wilson v. Simpson, 50 U.S. 9 How. 109 109 (1850)
Wilson v. Simpson
50 U.S. (9 How.) 109
The documents showing the title to Woodworth's planing machine are set forth in extenso in 45 U. S. 4 How. 647, et seq.
The assignment from Woodworth and Strong to Toogood, Halstead, and Tyack ( 45 U. S. 4 How. 655) declared not to have been fraudulently obtained according to the evidence in this case.
An assignee of Woodworth's planing machine, having a right, under the decision in 4 Howard, to continue the use of the patented machine, has a right to replace new cutters or knives for those which are worn out.
The difference explained between repairing and reconstructing a machine.
It was a continuation of the case of Simpson v. Wilson, 4 How. 710, where a statement of the case is given, which need not be here repeated. All the documents relating to the patent and transfer of Woodworth's planing machine are set forth in extenso in the case of Wilson v. Rousseau, 4 How. 647, et seq.
The report of the case in 4 Howard shows that the two following questions were certified to this Court, viz.:
"1. Whether, by law, the extension and renewal of the said patent granted to William Woodworth, and obtained by William W. Woodworth, his executor, inured to the benefit of the said defendant, to the extent that said defendant was interested in said patent before such renewal and extension."
"2. Whether, by law, the assignment of an exclusive right to the defendant, by the original patentee or those claiming under him, to 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, products
of a machine establish and used within the said County of Escambia, in the Territory of West Florida."
On 18 April, 1846, the decisions of the supreme court in these questions were certified to the circuit court, as follows:
"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 secured to persons in the use of machines at the time the extension takes effect the right to continue the use of the same."
"2. That an assignment of an exclusive right to use a machine, and to vend the same to others for use, within the specified territory, does authorize an assignee to vend elsewhere, out of the said territory, plank, boards, and other materials, the product of such machine."
Thereupon, leave was granted by the circuit court to the defendant, Forsyth, to amend his plea, and to the complainant to amend his bill.
And thereupon the complainant amended his bill --
1. By charging that the mutual deed between Woodworth and Strong of the one part, and the assignee of Emmons' patent before mentioned, was procured by the latter by fraud upon Woodworth and Strong, not discovered until the extension of the patent.
2. That the defendants had put in operation one new machine since the extension of the patent of 1842 took effect, and that they had rebuilt, by the addition of new parts, being substantial parts of Woodworth's invention, the old machines which they had in actual use at the expiration of the first term of the patent, so that they were practically no longer the same machine, and thus that the use of those machines, under the color of machines which had been in actual use at the expiration of that term, was a fraud upon the law.
Issue was joined upon these new matters. Evidence was taken upon them, as well as upon the question of the extent of infringement.
It is not necessary to insert this evidence, because the substance of it is stated in the opinion of the Court.
On 4 May, 1849, the cause came on to be heard before the circuit court, upon the bill, answers, replication, exhibits, and evidence, when the court decreed that the bill should be dismissed.
The complainant appealed to this Court. chanroblesvirtualawlibrary