ous suits are still pending contesting the right. Mr. Justice Story was one of the first judges whose duties required him to scrutinize this patent in all its parts, and he sustained it in all. This was before the specifications were corrected. And this court also sustained it, in 7 How. 712, where it says "the specifications accompanying the application for a patent are sufficiently full to enable a mechanic with ordinary skill to build a machine." And this is what the law requires.

and to the back part of this carriage is attached an iron axletree, bearing two brass pinions, which gear into a rack, and tend to regulate the movement of the carriage. The bench moves itself vertically by means of screws which support it, and tend to raise it or lower it, according to the thickness of the wood to be worked." "Four small, graduated plates of metal, placed in the interior angles of the superstructure, act as a regulator to fix this bench in a perfectly horizontal position." "Two iron squares about the bench at both ends." "Experience," he says, "has taught that the weight of the bench was not sufficient, singly, to prevent the vibration imparted to it by the machine when in operation, and there resulted from this vibration waves on the surface of the planed board." This was obviated by the weight of the carriage. "The carriage is of cast iron, and weighs about two hundred and forty-one pounds. It is necessary that the carriage should be of sufficient weight, so as not to be raised by the strain of the tool."

In the corrected specifications the patentee says: "Having thus fully described the parts and combinations of parts, and operation of the machine for planing, tonguing, and grooving boards or plank, and shown various modes in which the same may be constructed and made to operate, without changing the principle or mode of operation of the machine, what is claimed therein, as the invention of William Woodworth, deceased, is the employment of rotary planes, substantially as herein described, in combination with rollers or any analogous device, to prevent the boards from "The back part of the bench carries a claw, being drawn up by the planes, when cutting against which the wood is rested and stopped, upwards, or from the planed to the unplaned like a carpenter's bench. At the other extremsurface, as described. And also the combina-ity, the wood is stopped by movable dogs, tion of the rotating planes with the cutter which pass under a bar through which passes wheels, for tonguing and grooving, for the pressure screws.' And he further says: "We purposes of planing, tonguing and grooving have seen, in the description of the first maboards, etc., at one operation, as described." chine, that the piece called guide (because it "And, finally, the combination of either the tonguing or grooving cutter wheel, for tonguing and grooving boards, etc., with the pressure rollers, as described; the effect of the pressure in these operations being such as to keep the boards, etc., steady, and prevent the cutters from drawing the boards towards the center of the cutter wheels, whilst it is moved through by machinery," etc.

serves effectually to guide the wood under the tool for grooving and molding) was [*226 fixed on the superstructure of the bench. In the new machine, this piece is borne by the carriage."

From this description it appears that the planing cylinder is carried by an iron frame, and passes over the surface of the board, which is fastened on a bed by a claw at one end, and at the other by movable dogs. This bench, on which the board is placed, is movable vertically, so as to be adjusted by screws to the thickness of the wood to be worked.

L. Roguin, of France, in the years 1817 and 1818, invented a machine for planing, grooving wood, moldings, etc., it is alleged, substantially on the same principles as Woodworth's machine. 225*] *A considerable number of experts The wood is fastened on this adjustable bed, were examined in the Circuit Court, on both and the iron frame which carries the cutting sides, and their opinions, as usual in such cases, cylinder is of sufficient weight to keep the cutwere directly in conflict. Such testimony, being ters on the board, but this machinery cannot rewritten, cannot lead the court to a satisfactory duce the plank to the same thickness. When the result, by weighing the evidence, as might be bench rises or falls, the whole surface of the done by a jury, where the witnesses are ex-plank rises and falls, and the cutting knives can. amined in open court. There seems to be no other mode of arriving at a correct conclusion, than to read what the experts have said, and make up an opinion on the specifications of the patents, and on an examination of the models. | The French machine was improved in 1818. The patentee says: "The parent idea of the first machine could not vary. This parent idea consisted in subjecting the wood to the action of a tool of a particular shape, and to impart to this tool a rotary movement; but the choice remained, either of making the tool stationary, and causing the wood to advance under it with a slow and progressive motion-one rotary, the other progressive. The first was adopted in the construction of the machine described in support of the petition for letters patent; the second has been adopted in the construction of the improved machine."

After describing the structure of the cylinder, he says: "It is borne by a cast iron carriage,

not so operate by pressure on so long a surface as to reduce the inequalities of the board. But this can be done by pressure rollers, as in Woodworth's machine, on each side of the cutting cylinder-one adjustable, so as to admit the unplaned plank; the other fixed, so as to admit the passage of the plank, when reduced to the required thickness. The French machine may present a smooth surface, but the inequalities of the board will not be removed. They will remain in the same proportion as before the planing operation.

It is argued, that the piece or bar which, in the first machine, was fastened to the bench, and which, in the improved one, was annexed to the carriage, operated as a pressure roller. If this were admitted, it would not remove the difficulty, as one pressure roller or bar could answer no valuable purpose. There must be two rollers, one adjustable, as above stated, or two fixed rollers, or bar and an adjustable bed,

to reduce the plank to an equal thickness. But if L. Roguin be permitted himself to describe the function of this bar, it is, "to guide the wood under the tool for grooving, tonguing and molding." Shall the language of the inventor be misapplied, and this bar be appropriated to a use which it would seem he never thought of, to render invalid Woodworth's patent?

Several of the witnesses on both sides gave their testimony from the description of L. Roguin's patent, published in a book called "Brevets d'Inventions;" but, as that book was not published until after Woodworth's invention, its description is evidence only so far as it agrees with the specification attached to the patent of L. Roguin. And it does appear, from the original specifications, filed by him, a certified copy of which has been recently procured by M. Perpigna, that there are some material variances. We must therefore look to the authentic paper and drawings, as certified, for evidence in regard to the machine.

The organization of this machine does not 227*] seem to be on the same principle as Woodworth's, and the result is different.

The other French machine, alleged to be similar to that of Woodworth's, is De Manneville's. This machine was patented in France in 1825 and described in the printed work called "Brevets d'Inventions." The patent embraced two machines, having for (their) object the grooving, planing and reducing to a uniform thickness, wood intended for inlaid work; as well as all sorts of boards, whatsoever may be their dimensions. The inventor calls them a groover and planer.

Several of the

tion instead of a rotary one.
elements in both machines are the same, but
they are not so arranged as to act in the same
manner or on the same principle.

Some of the witnesses for the defendants think, that from the two French patents, the Woodworth machine might be constructed without invention; but these machines must be considered singly, and not together. In the defense it is alleged, in reference to Woodworth's machine, that the same thing substantially was patented in France, in 1817 and 1818, by L. *Roguin, and in 1825, by [*228 Manneville. The defense, in this respect, is not sustained, as neither of the patents are substantially the same as Woodworth's.

The next point for consideration is, whether, in the amended specifications of Woodworth's patent, in 1845, a new invention was claimed, not embraced in the original patent.

It must be admitted that the subject matter of the new patent is the same. The patent was surrendered, to correct defective specifications, which did not result from any fraudulent intent. This right was secured to the patentee by the thirteenth section of the Patent Act of 1836; and on an application to the Commissioner of Patents, he, finding there had been no fraud, a new patent was issued for the same invention, more accurately described, as the law authorized.

In the case of Woodworth v. Stone, 3 Story, 749, and Allen v. Blunt, Ib. 742, it was held, that the action of the Commissioner, in accepting a surrender of a patent and issuing a new one, concluded the parties, unless fraud be shown. And in Stimpson v. Westchester Railroad, 4 How. 380, this court say: "In whatever manner the mistake or inadvertence may have occurred is immaterial. The action of

the question of fraud only."

The corrected specifications of the new patent, on a surrender, would necessarily be different from those that were defective. And it is the duty of the Commissioner not to permit a new invention to be claimed under the pretense of correcting defective specifications.

The description of this machine by the inventor is confused and scarcely intelligible. One of the defendants' witnesses describes it as having two planes, one of which is called the government in renewing the patent must rough, the other smooth, both of which are be considered as closing this point, and as leavkept down to the face of the board by a tool-ing open for inquiry, before the court and jury, bearer, and are moved backward and forward by a crank motion. The rough plane is movable to and from the board, by being held to it by a spring; the smooth plane, or finisher, is immovable, principally, from the board, except to separate the shavings from it. The position of the board is edgewise, resting on the horizontal rollers-friction rollers; and it is carried Some things are omitted in the new patent through by a pair of fluted cylinders or rollers, which were claimed in the old one. But the vertical, and parallel to each other; which principal objection on this ground seems to be, rollers press upon each side of the board, one that pressure rollers were claimed in the new of which, the back one, is made to slide in its patent, and were not claimed in the old one. boxes, held up by a spring, and thus made to This is a mistake, as has already been shown. yield to the inequalities of the thickness of the These rollers were represented in the drawings, board. Another pair of rollers, holding the and in that way were more accurately desame vertical position, called discharging cylin-scribed than they could have been by a written lers, neither of which is yielding, nor are they fluted; and to adjust the different thicknesses, the inventor suggests rollers of different diameters, and on an adjustable bed.

Anyone can at once see that this is not an organization of machinery similar to Woodworth's machine. It is not the same principle, nor is it in substance like it. This remark is made in regard to the combination claimed by Woodworth, and not to all the elements of which that combination is formed. In the Manneville machine there is no combination of pressure rollers with rotary cutters, as in Woodorth's; the cutters have a reciprocating mo

specification. These drawings are a part of the patent. It does not appear that the corrected specifications embrace a new invention, not included in the original patent.

The third and last point is, whether the defendants' machine is an infringement of the plaintiffs'.

In the opinion of the Circuit Court in this case, it is said, "The defect in the Hill machine was, that it did not reduce the board to a uniform thickness. This desideratum the plaintiff has obtained by an improvement, for which he was entitled to a patent. The defendant has accomplished the same purpose with [229

out using the improvement of the plaintiff, but merely by a new invention of his own, and therefore does not infringe."

From these remarks it would seem, that the Circuit Court considered Woodworth as entitled to a patent, "for reducing boards to a uniform thickness," but that his patent does not cover it. In this the Circuit Court was mistaken, as I shall endeavor to show, in fact and in law.

face of the plank, the latter being sustained against the planing cylinder by means of the carriage or bed plate, or otherwise, so that it cannot deviate, but must be reduced to a proper thickness, and correctly tongued and grooved." Here Woodworth describes the combined operation of "planing, tonguing, and grooving; and by which the plank is reduced to a proper thickness, that is, the required thickness; and correctly tongued and grooved," etc. This is the effect of his machine in planing boards, clearly described.

It is not controverted that Woodworth's combination of machinery does reduce boards to an equal thickness. He did not and could not He says, the board is kept against the planclaim a patent for reducing a board to a uni-ing cutters by means of the carriage, or bed form thickness; for an exclusive right could plate, or otherwise. The pressure rollers are not be given for such a result. For centuries, claimed in his specification written, and also boards have been reduced to a uniform thick in his drawings, which show how they are to ness by hand planes, and perhaps by other be applied. He also says, "Fig. 7 represents means. What, under the patent law, could the same machine with the axes of the planing Woodworth claim? He had a right to claim, cylinder placed horizontally, and intended to as he did claim, a combination of machinery operate on one plank only at the same time. which would produce such a result. Was it AA is the frame; B B the heads of the planing necessary, in the summing up of his claim, cylinder; C C the knives or cutters attached to which is done to distinguish what he has in said heads, to meet the different thicknesses of vented from parts of his machine which he the plank; the bearings of the shaft of the has not invented, that he should claim the com-cylinder may be made movable by screws or bination of his machine for the purpose of other means, to adjust it to the work, or the reducing boards to a uniform thickness? This carriage of the bed plate may be made so as to would have limited his invention to that pur- raise the plank up to the planing cylinder." pose, when it was applicable, and was intended The patent of the defendants was issued to be applied, to that and many other purposes. February 12th, 1850. It is alleged to be an imBy the sixth section of the Patent Law of provement upon Hill's machine. That machine, 1836, an inventor is required to describe his from the description, consisted of a planing invention in every important particular, in his cylinder, a platform bench, with an aperture application for a patent, so as to enable those in it, through which the planing cutters operskilled in the art or science to which it apper- ated, so as to cut away any required thickness tains, to make, construct, compound, and use from the surface of the plank subjected to its the same; and if the invention be a machine, action; the relation of the cylinder to the bench he is required to state "the several modes in was permanent; a spring plate bore upon the which he has contemplated the application of plank nearly opposite to the cylinder, and the principle or character by which it may be forced it towards the cylinder and bench; distinguished from other inventions; and shall feeding rollers carried the plank forward, the particularly specify and point out the part, same as in Woodworth's machine. improvement, or combination, which he claims as his own invention and discovery." He is required to accompany the whole with a draw ing, and, if a machine, a model, etc.

Is it not clear that Woodworth has explained the principle, and the several modes in which he has contemplated the application of the principle or character of his machine, by which, in the language of the Act, it may be distinguished from other inventions? The plank is planed, tongued, and grooved, by an organization of machinery unknown before. This is all, in the summing up, which the Act requires. It is objected that Woodworth does not in clude, in his claim, that of reducing a plank to a uniform thickness. The invention consists in the means through which this is done. A 230*] result or an effect is not the invention. This appears to have been the turning point in the opinion of the Circuit Court.

But Woodworth has, in the specifications of his machinery, stated that the board is necesBarily reduced to a uniform thickness. He says "The edges of the plank, as its planed part passes the planing cylinder, are brought into contact with the above-described tonguing and grooving wheels, which are so placed upon their shafts, as that the tongue and groove shall be left at the proper distance from the

By this operation a stratum of equal thickness was cut from the plank, leaving a smooth surface, but not removing the inequalities of the boards. The combination of machinery was different in principle from Woodworth's, and consequently the result was different.

*Norcross says, his invention is an [*231 improvement of Hill's machine, and "renders it capable of reducing or planing a board to an equal thickness throughout its length." He says "Hill's machine was capable of planing or reducing a board on one side, or removing from such side a stratum or layer of wood of an equal thickness," but this did not make the board of uniform thickness.

The amended machine contains rotatory planes which cut, from the planed to the unplaned surface of the plank; an adjustable ban and rest is at a fixed distance from the cutting action of the planes; the rotating planes and this rest bar were so connected together in a separate frame as to move vertically with the frame, and is borne downwards by their weight; two bars, one before and the other behind the rotating planes, and on the face of the plank cut by them, to cause its opposite face, in its progress through the machine, of whatever thickness and however warped, to pass in contact with the rest bar F. One of the said bars

is termed a platform B, and the distance be tween this and the rest bar F, is variable and self-adjusting to the varying thickness of the plank before it is planed, and the other, called a horizontal bar or throat piece G, placed at the same distance from the rest bar F, as the line of the cutting action of the rotating planes, to act on the face of the plank which has been

planed, and insure the contact of the opposite

and unplaned face with the rest bar F. Norcross says, "what I claim as my invention is, the combination of the rotatory planing cylinder E, and the rest F, with mechanism, by which the two can be freely moved up or down, simultaneously and independently of the bed, or platform B B, or any analogous device, sub stantially in the manner and for the purpose of reducing a board to an equal thickness throughout its length, all as herein before specified."

though different in form, are the same in principle, and produce the same effect.

I think there is an infringement, and that the decree of the Circuit court should be reversed.

Order.

This cause came on to be heard on the tran

script of the record from the Circuit Court of the United States for the District of Massachution whereof, it is now here ordered, adjudged setts, and was argued by counsel; on consideraand decreed by this court, that the decree of the said Circuit Court in this cause be, and the same is hereby affirmed, with costs.

THE NORTHERN INDIANA RAIL. [*238
ROAD COMPANY, and the Board of Com-
missioners for the Western Division of the
Buffalo and Mississippi Railroad, Appellants,

"I also claim the above-described improvement of making the under side of the rest concave, in combination with so extending the part B, under the rest F, and applying it to the concave part thereof, as to cause the board, as it passes across the rest, to be bent, and presented with a concave surface to the operation THE of the rotatory cutter planing cylinder, substantially as specified."

V.

MICHIGAN CENTRAL RAILROAD
COMPANY.

bill to restrain one railroad from intruding within exclusive limits of another, lying out of its district-Necessary parties.

This organization of machinery seems to be | Jurisdiction-Circuit Court cannot entertain the same in principle as that of Woodworth's, and produces the same result. If the concave surface of the board, on which the cutters operate, be an improvement, or any other slight change has been made, which may be an improvement on Woodworth's machine, that would give the defendants no right to use it without a license.

The Michigan Central Railroad Company, established in Michigan, made an agreement with the New Albany and Salem Railroad Company, estab lished in Indiana, that the former would build and work a road in Indiana, under the charter of the latter.

Another Company, also established in Indiana, claiming an exclusive right to that part of Indiana, called the Northern Indiana Railroad Company, filed a bill in the Circuit Court of the United States for the District of Michigan, against the Michigan construction of the road under the above agreeCompany, praying an injunction to prevent the ment.

The Circuit Court had no jurisdiction over such case.

The difference between the machines appears 232] to be this: The rotating planes and the plate or bed of Woodworth's are stationary in the main frame, and the roller or analogous device on that face of the plank to be planed, is movable toward and from the plate or bed to suit the varying thickness of the plank. While in the Norcross machine, two bars are substituted for the pressure rollers; and in-a The subject matter of the controversy lies bestead of making the one which acts on the yond the limits of the district, and where the plank before it is planed, movable, to suit the process of the court cannot reach the locus in quo. varying thickness of the plank, it is fixed per-pany are seriously involved in the controversy, and Moreover, the rights of the New Albany Commanently on the main frame; and the rotating they are not made parties to the suit. The Act of planes and the plate or bed, termed by him the Congress, providing for the non joinder of parties rest bar F, are connected together in a separate who are not inhabitants of the district, does not frame, and together move up and down, to apply to such a case as the present. adapt themselves to the inequalities in the thickness of the plank.

Norcross has made that part of his machinery movable, which in the Woodworth machine is fixed; and that which is movable in the Woodworth machine, he has made permanent. These changes, and the reversal of Woodworth's machine, is the difference in their structure. A cast of the eye on the models, will satisfy a machinist of the truth of this

representation.

Whether the cutting cylinder operates above or below the bench on which the plank is laid, can be of no importance; nor is the difference material whether a pressure roller varies to suit the variable thickness of the plank, or the planing cylinder, connected permanently with the bench, shall be elevated or depressed to accomplish the same object. These devices,

THIS

HIS was an appeal from the Circuit Court of the United States for the District of Michi

gan, sitting as a court of equity.

The appellants were complainants below. They were corporations created by, and doing business in, the State of Indiana, claiming a prior right to make and use a railroad running from east to west across the northern part of Indiana. The defendants were a company incorporated by Michigan, and had made a road

NOTE. Jurisdiction of equity to restrain trespasses and wrongs.

Courts of equity have jurisdiction to interfere in cases of trespasses, in order to prevent irreparable mischiefs. Maddock's Ch. 147, 148: West V. Walker, 2 Green's Ch. 279; Coop. Eq. Pl. pl. 152 153, 154; Mitf. Eq. Pl. by Jeremy, 137: Hanson 1. Gardiner, 7 Ves. 308, 309, 310: 2 Story's Eq. Jur. sec. 928; Norway v. Rowe. 19 Ves. 147, 148, 149; New York Printing and Dyeing Establishment v.

from Detroit to Michigan City. Being de- must be a party, when the person injured sirous to continue the road round the south-seeks redress against the transgressor. We ern end of Lake Michigan, they entered into an demand nothing as against the New Albany and agreement, for this purpose, with a company, Salem Company. Kerr v. Watts, 6 Wheat. incorporated by Indiana, called the New 550. Albany and Salem Railroad Company. The If the New Albany and Salem Company was appellants filed a bill in Michigan, the domicil made a party, the rights existing between that of the Michigan Central Railroad Company, Company and the defendants, whatever those praying for an injunction to prevent them from rights may be, could not be adjusted in this entering upon or using the said lands of said suit. complainants, and from grading and excavat- Second. The relation between the New Aling upon the same, and from hindering the bany and Salem Company and the defendants complainants from completing their road and is that of grantor and grantee; and it is never using the same exclusively, and from construct- necessary to make the grantor a party to a ing and using the railroad which the defend-suit against the grantee, except in real actions, ants have laid out, or any railroad upon or where the grantee vouches the grantor to warnear the line where the same is located, and ranty. from doing anything in violation of the exclusive rights of the complainants.