delivered the opinion of the court.
The bill in this case was filed by the appellants, on the 6th of July, 1850, in the Circuit Court of the United States, for the Western District of Penpsylvania, to obtain -an injunction restraining the appellees from the use of two of Woodworth’s planing taachines in the city of Pittsburg. The term for which Woodworth’s patent was originally granted, expired in 1842, but it was extended seven years by the board established by the 18th section of the act of 1836. And afterwards, by the act of Congress of February 26, 1845, this patent was extended for seven years more, commencing on the 27th of December, 1849, at which time the previous extension would have terminated.
It appears, from the pleadings-and evidence.in the case, that,
In the year 1833, during the term for which the patent was originally granted, the defendants purchased the right to construct and use a certain number of these machines within the .limits of the city of Pittsburg and Alleghany county; and the right to do so was regularly transferred to them by different assignments, deriving their title from the original patentee. - The two machines mentioned in the bill were constructed and used by the respondents soon after the purchase was made, and the appellees continued to use them up to the time when this bill was filed. And the question is, whether their right to use them terminated with the first extension, or still continues under the extension granted by the act of 1845.
The Circuit Court decided that the right of the appellees still continued, and upon that ground dismissed the appellant’s bill. And the case is now before us upon an appeal from that decree.
In determining this question we must take into consideration not only the special act under which the appellant now claims a .rponopoly, but also, the general laws of .Congress in relation to patents for useful improvements, and the special acts which have from time to time been passed in favor of the particular patentees. They are statutes in
pari materia;
and all relate to' the same subject, and must be construed together. It was so held in the case, of Evans
v.
Eaton, (
Indeed, this rule of construction is necessary to give effect to the special'act under which the appellant claims the monopoly. For. this law does not define the rights or privileges which the patent shall confer, nor prescribe the remedy to which he shall
Now, the act of 1886, in express terms,'gives the benefit of the extension, authorized by that law to the assignees and grantees of the right to use the thing patented, to the extent of. théir respective interests therein. And under this provision it was decided, in the case of Wilson
v.
Rousseau, (
The distinction is a plain one. The franchise which the patent grants, consists altogether in the right to exclude every one from making, using, or vending the thing patented, without the permission of the patentee. This is all that he obtains by the patent. And when he sells the exclusive privilege of making or vending it for use in a particular place, the purchaser buys a portion of the franchise which the patent confers. He obtains a share in the monopoly, and that monopoly is derived from, and exercised under, the protection of the United States. And the interest he acquires, necessarily terminates at the time limited for its continuance by the law which .created it. • The patentee cannot sell it for a longer time. And the purchaser buys with reference to'that period ; the time for which exclusive privilege is to endure being one of the chief elements of its value. He therefore has no just claim to share in a further monopoly subsequently acquired by the patentee. He does not purchase or pay for it.
But the purchaser of the implement or machine for the purpose of using it in the prdinary pursuits of life, stands on different ground. In using it, he exercises no rights created by the act of Congress, nor does he derive title to it by virtue of the franchise or exclusive privilege granted to the patentee. The inventor might lawfully sell it to him, whether he had' á patent or not, if no other patentee stood in his way. And when the machine passes to the hands of the purchaser, it is no longer within the limits of the monopoly.' It passes outside of. it, and is no longer under the protection of the act of Congress. And if his right to the implement or machine is infringed, he must seek redress in the courts of the State, according to the laws .of the State, and not in the courts of the United States, nor under
Moreover, the value of the implement or machine in the hands of the purchaser for use, does not in any degree depend on the time for which the exclusive privilege is granted to the patentee ; nor upon the exclusion of others from its use. For example, in the various patented articles used in agriculture, in milling, in manufactures of different kinds, ip steam-engines, or for household or other purposes, the value to the purchaser is not enhanced by the continuance of the monopoly. It is of no importance to him whether it endures for a year or twenty-eight years. He does not look to the duration of the exclusive privilege, but to the usefulness of the thing he buys, and the advantages he will derive from its use. He buys the article for the purpose of using it as' long as it is fit fór use and found, to be profitable. And in the case before us the respondents derive no advantage from the extension of the patent, because the patentee .may place around them as many planing machines as he pleases, so as to reduce the profits of those which they, own to.their just value in an open and fair competition.
. It is doubtless upon these principles that the . act of 1836 draws the distinction between .the assignee of a share ifl the monopoly, and the purchase of one or more machines, to be used in the ordinary pursuits of business. And-that distinction is clearly pointed out and maintained in the case of Wilson v. Rousseau, before' referred to.
Upon the authority, therefore, of the cases of Evans v. Eaton, .and Wilson -v. Rousseau, these two propositions may be regarded,as settled by judicial decision: 1. That a special act of Congress in favor of a patentee, extending the time beyond that originally limited, must be considered as ingrafted on the gene-' ral law; and 2. That under the general law, in force when this special act of Congress was passed, a party who had purchased the right to use- a planing machine during the period to which the patent was first limited, was entitled to continue to use it during .the extension authorized by that law.
.Applying these rules to the pase before us, the respondents
Biit there is nothing in the law to justify the .distinction claimed in this respect on behalf of the patentee.: Its language is plain and unambiguous. It does not even grant a new patent, as in the case of Oliver Evans. It merely extends the.time of the monopoly to which the patentee was entitled under the general law of 1836; It gives no new rights or privileges, to be superadded to those he then enjoyed, except as to the time' they should endure. The patent, such as it then was, is continued for seven years longer than the period before limited. And this is the whole and only provision contained in this special act. ' In order, therefore, to determine the rights of the patentee during the extended term, we are necessarily referred to the' general law, and compelled to' inquire what they were before this special act operated upon them, and continued them. . Indeed, the court has been obliged to recur to the act of 1836, in- every-stage of this suit, to guide it in deciding upon the rights of the parties, and the mode of proceeding in which they are to be tried. It is necessarily referred to in order .to determine whether the patent under which the complainant claims, was issued by lawful authority, and in the form prescribed by law;-.it was necessary to refer to it in the,.Circuit Court in order to determine whether the patentee was entitled to the patent, as the' original inventor, that fact being disputed in the Circuit Court; also, for the notices to which he was entitled in the trial o'f that question; and for the forum in which he was authorized to sue for an infringement of his rights. And the rights of the appeh. lant to bring the case before the court for adjudication'is derived altogether from the provisions _of the general law. For there is no evidence in the record to show that the machines are worth two thousand dollars, and no appeal therefore would lie from the decision of the Circuit Court, but for the special provision in relation to patent cases in. the act of 1836. And while it is admitted that this special 'act is so ingrafted on the general law,as to entitle the patentee to all the rights and privileges i&rhichthat law has provided, for the benefit and protection of inventors, it can hardly be maintained' that the one in favor of the purchaser of a machine is by construction to be excepted from it, when there are no words in-the special act ter indicate that such was the intention of Congress.
This construction is confirmed by the various special, acts-which have been passed from time to time, in favor of particular, inventors, granting them new patents after the first had. expired
It has been contended, on behalf of the appellant, that the insertion of these restrictions in one special law, and the omission of them in another, shows that, in the latter, Congress did not intend to exempt the purchaser from the necessity óf obtaining a new license from the patentee. And that Congress might well suppose that one inventor had stronger claims upon the public than another, and might, oh that account, give him larger privileges on the renewal.
But this argument only looks to one side of the question, that is, to the interest and claims of the inventor. There is another, and numerous class of persons, who have purchased patented articles, and paid for them the full price which the patentee demanded, and we are bound to suppose that their interests and their rights would not be overlooked or disregarded by Congress. And still less, that any distinction would be drawn between those who purchased one description of patented machines and those who purchased another. For example, the act granting a new patent to Blanchard, in 1834, for cutting or turning irregular forms, saves the rights of those who had bought under the original patent. And we ought not to presume, without plain words to require it, that while Congress acknowledged the justice of such Claims in the ease of Blanchard, they intended to disregard them in the case of Woodworth. Nor can it be said that the policy of Congress has changed in this respect after 1834, when 'Blanchard’s patent was renewed. For, as we have .already said, the same protection is given to purchasers in the' special .law, authorizing the renewal of Gale’s patent, which was passed a few days after the law of which we are speaking.
The fair inference from all of these special laws is this, that
And if such coiild be the interpretation of this law, the power of Congress to pass it would be open to serious objections. -For it can hardly be maintained that Congress could lawfully deprive a citizen of the use of his property after he had purchased the absolute and unlimited right from the inventor, and when that property was no longer held under the protection and control of the General Government, but under the protection of the State, and on that account subject to State taxation.
The 5th amendment to the Constitution of the United States declares, that no person shall be deprived of life, liberty, or. property, without due process of law.
The right to construct and use these planing machines, had been purchased .and paid for without any limitation as to the time for which they were to be used. They were the property of the respondents. Their only value consists in their use. And a special act of Congress, passed afterwards, depriving the appellees of the right to use them, certainly could not be regarded as due process of law.
Congress undoubtedly have power to promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings ánd discoveries.
But it does not follow that Congress may, from time tq time, as often as they think proper, authorize an inventor to recall
But we forbear to pursue this inquiry, because we are of opinion that- this special act of Congress does not, and was-not inténded to interfere with rights of property, before acquired ; but that it leaves them as they stood during the extension under the general law. And in this view of the subject, the appellant was' not.entitled to the injunction he sought to obtain, and the- Circuit Court were right in dismissing the bill.
As the decision on this point disposes of the case, it is unnecessary to examine the other grounds, of defence taken by the appellees.
The decree of the Circuit Court must be affirmed.
Woodworth’s patent bears date the 27tb of /December, 1828, and runs for fourteen years. On the 29th of July, 1830, the patentees conveyed to Isaac Collins and Barzillai C. Smith the right to construct, use, an.d vend to others, the planing machine invented within several States, including Pennsylvania, except the city of Philadelphia. On the 19th of May, 1832, Collins and Smith transferred to James Barnet the right to construct and use, during the residue of the aforesaid term of fourteen yéars, fifty planing machines, within Pittsburg and Alleghany county, for which he agreed to pay four thousand dollars. Bar-net agreed not to construct or run more than fifty machines during the term aforesaid, and Collins and Smith bound themselves not to license during the term, nor to construct or use .themselves during the term, or allow others to do so, in the limits of Pittsburg and Alleghany county.
On the 27th of December, 1842, the patent expired, but it was renewed and extended for seven years, under the act of 1836. This extension expired in 1849; but Congress, on the 26th of February, 1845, passed an act which provided that “ the said letters-patent be, and the same is hereby, extended for the term of seven years, from and after the twenty-seventh day of December, 1849.”
The patentee, by deed dated the 14th of March, 1845, and also by a further deed dated the 9th of July, 1845, conveyed to James E. Wilson all his interest as administrator in the letters patent under the extension by the act of Congress. And Wilson, on the 4th of June, 1847, for the- consideration of twenty-five thousand dollars, gave to Bloomer, $ie plaintiff, a license to con-;
The defendants continued to run their machines during the residue of the fourteen years, for which the patent was granted, and during the first extension; and the complainant filed his bill to enjoin the defendants from running their machines under the second extension, by the act of Congress.
The contract of the defendants was entered into the 19th of May, 1831, and under it Barnet had a right “to construct and use during the residue of the aforesaid term of fouriéen ypars, fifty planing machines,” &c. The patent expired on the 27th of D'ecerñber, in 1842. The contract of defendants Was made the 19th of May, 1832, leaving about nine years and six months, for the patent to run, and this was the time limited by the contract, and for which the consideration of four thousand dollars was paid. This was not left to construction from the life of the patent, but the' contract expressly declared the right was purchased “ for the residue of the aforesaid term of fourteen years.”
This term was enjoyed by the defendants, and under the decision of this court, in the case of Wilson
v.
Rousseau et al. (
This, as well as the former decision, was influenced by the consideration that the, owners of the machines are, in equity, entitled to run them so long as the exclusive right of the patent
But the hardship is supposed to exist, in the fact that, to use the right, a planing machine mpst be. Constructed at an expense ■of some four or five hundred dollars, ahd this will be lost to the occupier, if by an extension he shall not be permitted to run his machine. The answer-is, when he entered into the.contract he knew, or is presumed to have known, that the patent might be extended under the law of 1836 or by special act, and if he desired an interest under the renewed patent, he should have provided for it in his contract. Having failed to do this, it would seem to be unjust that, under a contract to run the machine less than ten. years, he should be entitled to run it sixteen years. The consideration paid was limited to the term specified in the contract. But, it is answered, that the assignee expected to run his machine after the‘termination of the contract oh which the ■exclusive right would end and Become vested in the public.
Let us examine this plea, and it will be found that á great fallacy prevails On this subject. A right that is common, is no more valuable to orle person than another, as all may use it. The injury, then, consists, so far as the licensee is concerned, in the reduction of the value of his machine, by the extension of the exclusive right in the patentee, to the exclusion of the assignee. It is true this deprives him of the monopoly which his contract secured to him. But he has enjoyed this to the extent of -his contract, and for which he has paid the stipulated consideration. Now his only equitable plea to run his machine during the renewed patent, arises alone from the supposed difference in the value of his machine, under the renewal, without a líbense, and;where the right becomes vested in the public.-
If there had been no renewal, the licensee might run his machine, and any other person might run one. It is a fact known to every observing individual, when a new business is set up,, .as a planing machine, supposed to be very profitable generally,-a competition is. excited, which reduces the profit below a reasonable compensation for the labor and expense of the business! If the monopoly continued, as enjoyed under the contract,’the consideration paid for the monopoly would be added
If the business of. the,county or city required the number of planing machines in operation, the licensee could sell his machine. at.a reasonable reduction for the time it had run. The machines of 'the defendant had. run, probably, from twelve to fifteen years. A considerable reduction would be expected by the purchaser, as a machine could not be expected to last more than twenty years. But suppose it can be used thirty, then one half of the value must be deducted for the wear of the machine fifteen years, which would reduce it to some two hundred and fifty or three hundred dollars.
But suppose the exclusive right should be continued in the patentee, by an extension of it seven years. Then, if the machines were not more numerous than the public required, they would be wanted by their owners, or by; others disposed to engage in the business. And I hazard nothing in saying, that, after deducting the compensation from the profits, paid for the exclusive right, they would be larger than could be hoped for,, where the right was common. . Under such circumstances, I can entertain no doubt, that a machine would sell for more money, under the extension of the patent, than where the right goes to the public.
The idea that to refuse the use of a machine under the extension of a patent, is an unjust interference with property, I think, is unfounded. There is no interference with the property in the machine. The owner may sell it to any one who has a license to use it. It is not the property in the machine that ia complained of, but. because the right to run it longer than the contract provided for, is not given. The licensee has used the franchise, as long as he purchased and paid for it; and can he in justice claim more than his comract. The extension of the right to use, while the extended patent continues, does a wrong to the patentee, by taking his property, without compensation, and giving it to the licensee. The franchise is property, and it can no more be transferred to another, without compensation or contract than any other property. It would seem that this description of property is not governed by contract. That a contract to use the franchise ten years, does not mean what is expressed, but may mean a right for twenty years, or any other term to which the patent may be extended.
Every man who has sense enough to make a contract, takes into his estimate the contingency of a loss, to some extent, in going out of the business. He fixes his own time for the con
It may be true, that, unless the contrary appear, when the patentee sells a planing machine, a right to use it may be applied. But the right to construct and the right to use, are dis-. tinct. Some purchase of the patentee -the right to construct the-machine, others to use it. This planing machine cannot be compared to a plough, or añy other article whieh may be considered the product of the patent. The machine is the instrument through which the plank is planed. The plank is the' product, and may be sold in the market as other property. But the planing machine cannot. be used, without' a license. The law protects the franchise, by prohibiting the use of the machine without a license. When Barnet purchased the franchise for the fifty machines, he d,id not buy the machines for a term as long as the machines could run, but for nine years and six month's. The contract, neither expressly nor impliedly, extended beyond that term.
In this view, I think that I am not mistaken, and if I am not, the license is not injured a dollar by the termination of his right to run his machine, as fixed in his contract. But, on whom is the injury inflicted by extending the contract of the licensee with the patentee, and that without compensation ? In the present case, the patentee has been injured, by the use of the fifty machines, at least four thousand dollars, the amount agreed to be paid for the right to run them less than ten years. .. And must not the property of the patentee be taken into the account, as well as the imagined rights of the licensee?
The patentee. is justly considered a public benefactor. He has conferred a great benefit upon the world; and he is entitled, under our laws, to at least a compensation for his expense, ingenuity, and labor.
That the patentee is the only one whose interests are regarded,as the ground of extending the patent in the act of 1836, is clear. Now, suppose the patentee has assigned the whole of the patent, without receiving such a compensation as the law authorizes; there can be no doubt he is entitled, on' that ground, to a renewal of the patent; and yet, under the decision now1 given, his assignees would receive all the benefits of the renewal: Should not this- fact cause doubts whether the rule of construction of the statute can be a sound one, which defeats its avowed object? If this be the cqnsequenee of the' assignment of the entire interest by the patentee, any partial assignment must produce the same result, though to a more'limited extént. A principle which will, not bear this test is not sound..
There seems to be a great mistake as to the profits of this patent. It was .a valuable patent, but, as. in all other cases, its value excited the rapacity of men who seek to enrich themselves by taking the property of others. The records of the-courts show, that piracies were committed on this patent in every part of the country; and that to sustain it, much expenditure and labor have been required. It is stated that the sum of near two hundred thousand dollars has been thus expended to establish this patent. Congress have extended many patents; in some instances conditions have been imposed, in others, the franchise has been extended unconditionally. Now, where the patent .is extended by act of Congress, without conditions, I am unable to perceive how the court can impose conditions. Such an act’would be-legislation, and not construction.
By the act of the 15th February, 1847, the patent of Thomas Blanchard, for. cutting irregular forms out of wood, brass, or iron,. was extended for fourteen years, from the 20th of January, 1848: “ Provided that such extension shall enure to the use and benefit of the said Thomas Blanchard, his executors and administrators and to no othet persons whomsoever, except that a bond fide assignee of the invention, by virtue of an assignment from the patentee heretofore made, shall have the benefit of this act, upon just, reasonable, and equitable terms, according to his interest therein. And if the said Thomas Blanchard, his exe-cutors or administrators, cannot agree with such ■assignee, the terms shall be ascertained and determined by the Circuit Court of the United States for the district in which such assignee resides, to be decreed upon a bill to .be filed by such assignee for that purpose. And provided further, that no assignee shall have the benefit of this act unless.he shall, within ninety days from its passage, agree with- the said Thomas-Blanchard as to the consideration upon which he is to have it, or file his bill,” fcc.
In the case of Evans
v.
Jordan and Morehead, (
The above act extended the patent fourteen yeafs, “ provided that no person who may have heretofore paid the said Oliver Evans for license to use the said improvements, shall be obliged to renew said license or be subject to damages for not renewing the same; and provided also, that no person who shall have used the said improvements, or have erected the same for dse, before the issuing of the said patent, shall be liable to damages therefor.”
This was a much stronger case for equitable considerations than the one before us. Evans’s patent had expired. His improvements were free to the public, and they were adopted by the defendants, before he made application tó Congress for a renewal of his patent. ■ I will cite the reasoning of the Supreme Court on that case. “ The language,” they say, “ of this last proviso is so precise, and so entirely free from all ambiguity, that it is difficult for any course of reasoning to shed light upon its meaning. It. protects against any claim for damages which Evans might make, those who have used his improvements, or who may have erected them for use, prior to the issuing of his patent under this law. The protection is limited to acts done prior to another act thereafter to be performed, to wit, the issuing of the patent. To extend it, by construction, to acts which might be done subsequent to the issuing of the patent, would be to' make, not to interpret, the law.” “ The injustice of denying to the defendants 'the use of machinery which they had erected after the expiration of Evans’s first patent, and prior to the passage of this law, has been strongly-urged as a reason why the words of this proviso should be so construed as to have a prospective operation. But it should be recollected that
And the court say, “ The legislature might have proceeded still further, by providing a shield- for persons standing in the situation of these defendants. It is believed that the reasonableness of such a provision could have been questioned by no one. But the legislature have not thought proper to extend the protection of these provisos beyond the issuing of the patent under that law; and this court would transgress the limits of the judicial power by an attempt to supply, by construction, this supposed, omission of the legislature. The argument founded upon the hardship Of this and similar cases, would be entitled to great weight if the words of this proviso were obscure and open to construction. But considerations of this nature can never sanction a construction at variance with the manifest meaning of the legislature, expressed in plain and an unambiguous language.”
The above views do not conflict with the opinion of the court in Evans
v.
Eaton,
There can be no question that the special law extending the grant", as to its validity, is subject to the general patent law. The right was intended to be exclusive, if it be established that Evans was the original inventbr of the improvements claimed, and such improvements were stated with the necessary precision.
To give any other construction to the above remarks of the court, would be in direct.contradiction to the language used, and the principle decided, in the case above cited from Cranch. In fact, the remark that the relief of Evans was ingrafted on the general law, was made in reference to thé jurisdiction of the. court, and cannot be extended beyond that and other questions, in relation to the validity of the patent.
This .argument of the court, in Evans v. Jordan, applies with all its force and authority to the case before us; and I need only say it was the language of Marshall, of Story, of Washington, and of .'the other Judges of the court, except Judge Todd, who appears to have been absent. I can add nothing to the weight of the argument; but I will proceed to name the Judges of this court who have given opinions opposed to the decision of this case by four of my brethren.
■ Mr. Justice. Wayne being sick, did not sit in the case. In Wilson v. Rousseau, he held that, under the act of 1836, the licensee had no right' to run his machine under the extended patent.
Mr. Justice Curtis having, as counsel, given an opinion op posed to the right of the defendants, did not sit in the case. Mr. Justice Thompson and Mr. Justice St!ory had both given opinions against the right of the assignee, unless under a special assignment. This was the opinion of Mr. Justice Woodbury, as expressed in 'the case of Wilson v. Rousseau. Mr. Justice McKinley gave an opinion against the right of the assignee under the act of 1845, extending Woodworth’s patent. The same decision has been frequently given, by the Justices of this bench, in the second and seventh circuits.
-Sustained by the authority of. seven Justices of this court, and by. an 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 shall arise in my circuit, for the consideration and decision of a full bench.
This cause came on to be heard, on the transcript of the record from the Circuit Court of the United States for the Western District of Pennsylvania, and was argued by counsel. On consideration whereof, it is now here ordered, adjudged, and decreed by this court, that the decree of the said Circuit Court in this cause be, and the same is hereby, affirmed, with costs.