Elisha Bloomer, Appellant v. John Quewan, Allen Quewan, and Samuel Douglas, Partners Under the Name of Quewans Douglas

• Decision Date: 01 December 1852
• Citation: 55 U.S. 539,14 L.Ed. 532,14 How. 539
• Parties: ELISHA BLOOMER, APPELLANT, v. JOHN W. McQUEWAN, ALLEN R. McQUEWAN, AND SAMUEL DOUGLAS, PARTNERS, UNDER THE NAME OF McQUEWANS & DOUGLAS
• Court: U.S. Supreme Court

55 U.S. 539 14 How. 539 14 L.Ed. 532 ELISHA BLOOMER, APPELLANT, v. JOHN W. McQUEWAN, ALLEN R. McQUEWAN, AND SAMUEL DOUGLAS, PARTNERS, UNDER THE NAME OF McQUEWANS & DOUGLAS. December Term, 1852

Mr. Justice Curtis, having been of counsel, did not sit on the trial of this cause, and Mr. Justice Wayne was absent.

THIS was an appeal from the Circuit Court of the United States for the Western District of Pennsylvania, sitting as a Court of Equity.

It was a bill filed by Bloomer, who claimed under Wilson, the assignee of Woodworth's planing machine. The whole of

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Wilson's title is set forth in the report of the case of Wilson v. Rousseau, 4 Howard, 646, as is also the act of Congress passed on the 26th February, 1845, (4 How. 662,) extending the patent for seven years from the 27th of December, 1849.

McQuewan claimed, through two mesne assignments from Woodworth and Strong, by virtue of a license granted on the 8th of November, 1833.

The bill and answer covered a great deal of ground, which need not be noticed in this report.

Amongst other averments was this, that the license conveyed no right to use the machine during the extension for seven years from 1849, under the act of Congress passed in 1845; and the decision of the court being in favor of the defendants below upon this point, it is unnecessary to state all the points and arguments upon other matters.

The court below were divided in opinion, and the bill was of course dismissed. Bloomer appealed to this court.

It was argued by Mr. Keller and Mr. St. George T. Campbell, for the appellant, and Mr. Dunlop, for the appellees.

The fourth point made by the counsel for the appellant was as follows:

IV. Whether the licensee of a right to use the patented machine for the original term of the patent, is entitled to continue the use of the same during the extension by Congress.

The facts in this regard appearing by the record, are

1. That Collins and Smith, who were assignees for the first term of the district in question, granted to Barnet the right for the city of Pittsburg and Alleghany county, 'to construct and use during the residue of the said terms of fourteen years,' the patented machine, and by the same assignment covenanted 'not themselves to construct and use,' nor to give license to any other person than Barnet 'during the terms aforesaid,' and Barnet covenanted not to construct more than fifty machines 'during the terms aforesaid.'

(The word 'terms' is used in the plural, as it will be perceived by the assignment that the grantors were the owners also of the Emmons patent, and that the limitation of his right applied to the duration of both.)

2. Barnet assigns all his 'right, title, interest, and claim of the within patent for Woodworth's planing machine to G. Warner and John W. McQuewan, their heirs and assigns,' except seven rights previously given.

3. It seems to have been granted, below, that Warner had assigned his license to McQuewan, and McQuewan to the two

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co-defendants, and that the machine was made during the first term of the patent; hence arises the question, have the appellees the right to continue its use during the congressional extension?

For the appellants it is submitted:

1. That this question, and the principles upon which it must be decided, have been already passed upon by this court.

In Wilson v. Rousseau, (4 Howard,) the question was of the right of the licensee to continue the use of the machine during the extension by the commissioner. The court were divided in opinion. In that delivered as their judgment, the right of the licensee to the continued use was put exclusively upon the terms of the 18th section, which were, '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 interests therein.' Without that provision it is conceded by the learned judge, in delivering the opinion of the court, 'that all the rights of assignees or grantees, whether in a share of the patent or to a specified 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.'

'From that date he is again possessed of 'the full and exclusive right and liberty of making, using, and vending to others the invention,' whatever it may be, not only portions of the monopoly held by assignees and grantees, as subjects of trade and commerce, but the patented articles or machines throughout the country, purchased for practical use in the business affairs of life, are embraced within the operation of the extension. This latter class of assignees and grantees are reached by the new grant of the exclusive right to use the things patented. Purchasers of the machines, and who were in the use of them at the time, are disabled from further use immediately, as that right became vested exclusively in the patentee. Making and vending the invention are prohibited by the corresponding terms of his grant.'

And the learned Judge, in expressing the opinion of the court, further declared that the provision in the 18th section, above referred to, was 'intended to restore or save to them,' (those in use of the thing patented at the time of the renewal,) 'that right which, without the clause, would have been vested again exclusively in the patentee.'

And the learned Judges who dissented from the opinion of the court did so upon the ground that even this clause of the 18th section did not confer upon the licensees the right claimed in their behalf.

Thus it is clear that the extension of a patent by lawful

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authority revests in the patentee every right originally possessed by him, and that unless the law, by virtue of which it is extended, contains a provision in favor of licensees or assignees, their right to use ends with the term of their license. (This, of course, does not apply to cases where the patentee has covenanted to grant any subsequently acquired extensions—none such is pretended in this case.)

Applying, then, these princples to the act extending this patent, (February 26, 1845,) it will be seen that it contains no such provision as is to be found in the 18th section of the act of 1836; and that, therefore, in accordance with the opinion of all the judges, the entire right was reinvested in the patentee.

The general power to renew and extend a patent is conferred by the 18th section of the act of 1836, which, after providing for the proof of the prerequisites, declares that '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 first term.'

The act in question provides that the patent 'be, and the same is hereby extended for the term of seven years from and after the 27th of December, 1849, and the Commissioner of Patents is hereby directed to make a certificate of such extension in the name of the administrator of William Woodworth, and append an authenticated copy thereof to the original letters-patent,' &c.; the words being substantially the same as these, judicially construed, and the intention being still further marked, as well by the omission of any provision for the licensees, as by the express insertion of the name of the party in whose favor the extension was made, and to whose benefit it was intended to enure.

The principles upon which the judgment in Wilson v. Rousseau, is founded, are, it is submitted, if possible, more conclusively applicable to the case of such an extension by Congress than to one made by the Commissioner.

Such, too, has been the application made of them by many of the learned Judges in their circuits. By Mr. Justice Nelson, July 22, 1850, in Gibson v. Gifford, in a written opinion delivered by him; by the late Mr. Justice Woodbury, July, 1850, in Mason v. Tallman, also in a written opinion; and by Mr. Justice Mc Lean, October 22, 1850, in Bloomer v. Stately.

The opinion of Mr. Justice Woodbury refers to similar decisions made by the late Justice McKinley, by Judge Ware, and Judge Sprague.

It may be proper, with reference to the argument founded upon the supposed intention of Congress, (not declared in the words of the act as already shown,) to permit a continued use

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during the congressional extension of machines licensed under the original term, to annex a list of the patents, extended by special acts, and thus to refer to the provisions in each, expressly declaring, where such was intended, the existence of such right, and providing for its mode of exercise or enjoyment.

The absence of such provision in the act of 1845, must, it is submitted, conclusively negative any idea of such intention, even if the judicially decided effect of such an act did not render a reference to such a source for interpretation, unnecessary.

I. January 21, 1808, to Oliver Evans, 6 Stat. at Large, 70. (With special provision for parties then using invention.) Under this act the cases of Evans v. Jordan, 9 Cranch, 199, and Evans v. Eaton, 3 Wheat. 454, were decided.

II. March 3, 1809, to Amos and William Whittemore, 6 Stat. at Large, 80, (without provision for licensees.)

III. February 7, 1815, Oliver Evans (steam engine,) 6 Stat. at Large, 147, (with proviso that no greater sum should be charged for constructing and using, than was during prior term, and subject to existing patent laws.)

IV. March 3, 1821, Samuel Parker, 6 Stat. at Large, 262, (subject to provision of then existing patent laws.)

V. March 2, 1831, John Adamson, 6 Stat. at Large, 458, without proviso or reference to existing laws.)

VI. March 3, 1831, Samuel Browning, 6 Stat. at Large, 467, (without proviso and reference to existing laws.)

VII. May 19, 1832, Jethro Wood, 6 Stat. at Large, 486, (proviso in favor of licensees that the price shall not be advanced.)

VIII. June 30, 1834, Thomas...