Andrew P. Simpson, Joseph Forsyth, and Bagdad Mills, Appellants, v. James G. Wilson

Andrew P. Simpson, Joseph Forsyth, and Bagdad Mills, Appellants, v. James G. Wilson. The decision of the court in the preceding case of Wilson v. Rousseau et ah, namely, that when a patent is renewed under the act of 1836, an assignee under the old patent has a right to continue the use of the patented machine, but not to vend others, again affirmed. An assignment of an exclusive right to use a machine, and to vend the same to others for use, within a specified territory, authorizes the assignee to vend else- , where, out of the said territory, the product of said machine. The restriction upon the assignee is only that hé shall use the machine within the specified territory. There is none as to the sale of the product.. This case came up on a certificate of division in opinion between the Judges of the Circuit Court of the. United States for the District of Louisiana, sitting as a court of equity. Wilson was the complainant below, who filed a bill, and obtained an injunction against Simpson, Forsyth, and Mills. After sundry proceedings in the case, Forsyth put in a plea, and a rule was obtained, that- the plaintiff should show cause why the injunction should not be dissolved. Upon argument, the court dismissed the rule, and the case was set down for hearing by consent of parties ; the complainants not admitting the facts alleged in the plea, but for the purpose of. raising the questions of law which they involved, and obtaining a speedy decision of the same. Upon the argument, the division of opinion arose which will be presently stated. The facts in thé case were these. The patent for planing, &c., having been obtained by Woodworth in .1828, as has been particularly mentioned in the report of the preceding ease of Wilson v. Rousseau et al., Forsyth, one of the defendants belbw, became an assignee under that patent for all its rights within the county'of Escambia, in West Florida'. This took place in 1836,. Woodworth, the patentee, having’died, his administrator, in 1842, obtained a renewal of the patent under the act of 1836; and in 1843 assigned to Wilson,;'the complainant' below, all the rights under the extended patent for. the States of Louisiana, Alabama,'. and the Territory of Florida. • On the 13th of April, 1844, the said Wilson instituted proceedings in . equity,-in the Circuit Court of Louisiana, against the .defendants, on the ground that •' they infringed on his just rights bji setting up and putting in operation the said patented machines in the Territory of Florida ; and by vending in New Orleans large quantities of dressed lumber, plank, &.C., the products of the machines there established. In May,-1845, the cáuse came up for hearing, as .above stated, \yhen the following points were ordered to be certified to this court, namely : — “J. G. Wilson a. Simpson et al. No.-1225. “ This case coming on to be heard on demurrer filed to the plea of Joseph Forsyth, one of the defendants, set down for hearing by consent, and the mátters of law' arising on said plea, the following points became material.to the decision, and being considered, the court were divided in opinion on the following points : — “1. Whether, Gy law, the. extension and renewal of ‘the said patent, granted. to William Woódworth, ánd obtained by William W. Woodworth, his executor, inured to the benefit of said defendant, to the extent that said, defendant was interested in. said patent before such renewal and-extension. “2. Whether, bylaw, the assignment of an exclusive right to the defendant, by the original patentee, or those claiming under him, to use4 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, product of a machiné established and used within the said county of Escambia, in the Territory of West Florida. ‘f Wherefore, upon the request of defendants’ counsel* it is ordered and directed, that the foregoing points of law be certified foi the opinion of the Suoreme Court of the United States.” The case was argued by Mr. Gilpin and Mr.. Westcotf, for the defendants below, who were the appellants in this court, and by-Mr. Henderson and Mr. R. Johnson, for Wilson. [MAJORITY — Mr. Justice NELSON] Mr. Justice NELSON delivered the opinion of the court. The'questions in this case come up on the certificate of a division of opinion in the court below. The judgment of this court' in the previous case'of Wilson, a. Rousseau et al., upon the second question certified in that case, disposes of the first question certified here-, and is answered accordingly. The second question certified involves the point, whether or not the assignment of -an exclusive right to make and use, and to vend to others, planing-maphines-, within.a given territory only, authorizes the assignee to vend elsewhere, out of the said territory, the plank, boards, and other materials, the product-of said machines. _. The court have no doubt but that it does ; and that the restriction in the assignment is to be construed as applying solely to the using of the machine. There is no restriction, as to place, of the gale of the produpt. Certificate accordingly to court below. Order. This cause came on tQ be heard, on. the transcript of the record from the Circuit Court of the- United States for the District of Louisiana, and on the points and questions ón which the judges of the said Circuit Court were opposed in opinion, and which.were certified to this court for its opinion.agreeably to the act of Congress in such case made and provided,, and was argued by counsel. On consideration whereof, it is the opinion of this court, — 1. That, bylaw, the extension and renewal of the said patent granted to William Woodworth,. and. obtained by William'W. Woodworth, his executor, did. not inuré 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 saved to persons in the use of machines at the time the extension takes effect the right to continue the use. 2. That an assignment of an exclusive right to use amachine, and to vend the same to others for use, within a specified territory, does, authorize an assignee to vend elsewhere, out of the said territory, plank, boards, and other materials, the product of such machine. It is therefore now here ordered and decreed by this court, that it be so certified to the said Circuit Court.