Woodworth v. Wilson

Citations: 45 U.S. 712; 11 L. Ed. 1171; 4 How. 712; 1846 U.S. LEXIS 423

Court: Supreme Court of the United States; March 18, 1846; Federal Supreme Court; Federal Appellate Court

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William W. Woodworth, as administrator, and E. V. Bunn, as assignee, filed a bill in the Circuit Court for the District of Kentucky against James, Benjamin, and Alpheus Wilson, asserting that Woodworth was the inventor and patentee of a planing machine. The bill highlighted an exclusive right granted to Bunn for the production and sale of this machine within Louisville and a ten-mile radius. The defendants were accused of constructing and operating a similar planing machine, infringing on the complainants' patent rights. James Wilson denied most allegations and claimed adherence to the injunction issued by the court, stating he had ceased using the disputed machine and switched to a different one. The court conducted extensive testimony regarding the similarities between the machines and the original invention. Ultimately, the court dissolved the injunction against James Wilson, dismissed the complainants' bill, and discharged the rule regarding the attachment for violating the injunction, awarding costs against the complainants. The court's opinion noted Woodworth's interest under the assignment as a valid reason for his inclusion as a party in the case. The assignment specified that Woodworth had obtained a patent for an improved method of planing and related processes, granting him exclusive rights for fourteen years from December 27, 1828.

William W. Woodworth, as the administrator of the estate of William Woodworth, has secured a seven-year extension of a patent that originally expired on December 27, 1842, as certified by the Commissioner of Patents on November 16, 1842. E. V. Bunn from Louisville, Kentucky, has requested a written license to construct and use machines based on this patent within Louisville and a ten-mile radius, offering $1,500 for this license. Woodworth has agreed to this request, granting Bunn permission to construct and operate ten planing machines within the specified area and to sell products made from these machines, but not in any other location within the U.S. or its territories.

Furthermore, Bunn is authorized to take legal action against anyone who violates this agreement. The contract stipulates that Woodworth will not permit any other individual to construct or use the improved machines within the designated area, and Bunn is limited to operating only ten machines within that area and cannot exceed this number or sell products outside the defined limits. The arrangement emphasizes that the total number of planing machines authorized under this license is strictly capped at ten.

William W. Woodworth has filed a disclaimer at the patent office in Washington, relinquishing claims related to the equal width and thickness reduction of materials using circular saws from his patent for a planing machine. A lien is retained on this assignment to secure the payment of $1,500 owed to Woodworth. The document notes the erasure and interlineation of certain terms before execution, and was signed on June 21, 1843. 

In the case, the court addressed several objections to the complainants, Woodworth and Bunn. First, it confirmed that the administrator can apply for a patent extension, referencing the prior case of Wilson v. Rousseau. Second, it found that Woodworth was indeed the original inventor of the planing machine, rejecting claims to the contrary. The court also dismissed concerns regarding the sufficiency of the patent specifications, stating they were adequate for a skilled mechanic. 

Additionally, it ruled that Woodworth’s interest justified his inclusion in the suit alongside Bunn, the assignee of the exclusive rights in Louisville and surrounding areas. Other minor objections raised were deemed insufficient to warrant dismissal of the case. Ultimately, the court concluded that the decree dismissing the bill against defendant James Wilson and dissolving the injunction was erroneous and ordered that a perpetual injunction be issued.