Sullivan v. Redfield.

The invention should be so clearly described, as to enable the public to put it in use.

The specification described the invention as "consisting essentially in attaching the packet to the steam-boat, with ropes, chains, or spars, so as to communicate the power of the engine from the towing vessel to the vessel taken in tow, and kept always at convenient distance, the manner of applying the power, varying with the circumstances in some measure:" held bad for uncertainty, and as describing a well known natural power, and not an invention.

THIS was an application for an injunction against the violation of a patent right.

The complainant stated in his bill, that having ascertained by a course of experiments, that the resistance of the water against the bow or head of a vessel, when moving, is greatly diminished by keeping her as close in the wake after another vessel as possible with convenience, and perceiving the result to be favourable to a new and useful application of steam to the conveying of passengers in a separate boat from the engine, he, on the 4th of December, 1816, obtained a patent "for a new and useful improvement in the steam tow-boat," the specification of which was as follows: "I claim as my invention, the application of steam engine power, placed in one vessel to the towing or drawing after her another vessel, for the purpose of conveying thereon passengers or merchandise, or either of them, being a new application of a known power. The manner in which this application may be made, varies with the circumstances in some measure, but essentially consists in attaching the packet to the steam-boat, with ropes, chains, or spars, so as to communicate the power of the engine from the towing vessels to vessels taken in tow, and kept always at convenient distance. The advantages attending this improvement are, that lighter and less expensive vessels may be used; the steam engine-boat may be of a smaller size; and the engine may rest on a frame bearing on her

Sullivan v. Redfield.

whole extent, but constructed separately from the boat; that any kind of steam engine may be used and applied, especially those of high pressure and lighter construction, without exposing the passengers and merchandise to danger; and there will be more comfort, quiet, and safety in the packetboat; and it is obvious there may be by means of two or more boats, a convenient separation of the passengers, paying different prices. John L. Sullivan."

The bill further stated, that the complainant endeavoured to introduce his invention into use as soon as possible, by putting it into practice and otherwise deriving a revenue therefrom; and particularly, that on his proposal a company was formed and incorporated in the state of Georgia, to navigate the river Savannah with steam tow-boats, to whom a pro!ongation of the time of the patent or exclusive privilege for such navigation, was granted by the state of South Carolina, and that the company purchased complainant's patent-right, paying him 5,000 dollars: That the success of the company was so great as to induce the formation of other companies in other states: That the state of Massachusetts granted him an extension of his term to encourage the introduction of tow-boats on Connecticut river; and that he continued his experiments on Merrimack and Charles' rivers, for the purpose of improving in the art.

The bill further stated, that the exclusive privilege of Liv ingston and Fulton had prevented the complainant from introducing his invention in this state, which he had ever been desirous of doing, until the late decision of the Supreme. Court, declaring those privileges unconstitutional; such a decision as complainant had spent much time and money in endeavouring to procure, but without success. That as soon as possible after this decision, he tried to introduce his invention into New-York, by offering it for sale, and endeavouring to form companies, and by publications in the newspapers.

Sullivan v. Redfield.

The bill then charged, that the defendant and others had associated for the purpose of building and running the steam tow-boat, Commerce and safety barge Lady Clinton, for the express purpose of separating the passengers from the boat carrying the engine, in the mode devised by complainant, and for which he had an exclusive right; and that those boats had in June last, been put in use between New-York and Albany, under the command of the defendant Seymour, who had thus usurped complainant's privilege, intercepting and preventing the emoluments thereof, which late disastrous accidents on board of steam-boats on the common plan, had rendered more sure, valuable, and important.

The bill concluded with a prayer that the defendants might be restrained by injunction from using said boats.

The motion was argued on the matters contained in the bill only.

H. D. SEDGWICK and R. SEDGWICK for the complainant. C. D. COLDEN and S. P. STAPLES for the defendants.

THOMPSON, J. THE application in this case is for an injunction to restrain the defendants and their associates from navigating the steam boat Commerce and safety barge Lady Clinton, which the bill alleges they are doing in violation of a patent right of the complainant. The application comes before the Court on notice of the motion duly served. The defendants have appeared by their counsel, but have read no affidavits, or shown any thing in opposition to the motion, except what arises upon the bill itself. Nor has the complainant fortified his application with any thing except what is contained in his bill. It is presumed that the bill has been sworn to, though even that does not appear.

Under this state of the case, an objection has been made,

Sullivan v. Redfield.

which may be considered in some measure as a question of practice, viz. Whether the bill should not be accompanied by an affidavit, that the complainant believes himself to be the original inventor of what he claims under his patent. The bill in this case does not allege, that the complainant is the original inventor; so that admitting it to have been sworn to, there is no verification under oath, that he believes himself to be the original inventor. That it is material to his claim, that he should be the inventor, cannot be denied. It is the only ground upon which the patent right can be sustained

It is said, however, on the part of the complainant, that the oath required to be made by the patentee, before he can obtain his patent, is at least prima facie evidence that he is the inventor or discoverer. The weight that ought to be given to this oath may depend on circumstances. The Court will certainly not presume that the patentee, when he made the oath, did not believe himself to be the true inventor or discoverer. Bu the question is not whether at that time he was under such belief, but whether he is still under that belief when he seeks to enforce his patent right.

In the present case the patent was granted in the year 1816, and the patentee may since that time have obtained such information respecting the invention, that he could not now swear that he believes himself to be the inventor of what he claims; and there may be some question whether the established practice of the Court does not require. such an affidavit, when application is made for an injunction. Among the rules of practice adopted by the Supreme Court of the United States, for the Courts of Equity, in February term, 1822, it is by the 33d rule provided, that "in all cases where the rules prescribed by this Court or by the Circuit Courts do not apply, the practice of the Circuit Courts shall be regulated by the practice of the High Court of Chancery in England." And in the case of Hill v. Thompson," decided a 3 Merivale, 624.

Sullivan v. Redfield.

in the year 1817, Lord Eldon said, that when in future an injunction is applied for ex parte, on the ground of a violation of a right to an invention secured by patent, it must be understood, that it is incumbent on the party making the application to swear, at the time of making it, as to his belief that he is the original inventor. For although when he obtained his patent he might very honestly have sworn to his belief of such being the fact, yet circumstances may have subsequently intervened, or information have been communicated sufficient to convince him, that it was not his own original invention, and that he was under a mistake, when he made his previous declaration to that effect.

We think there is great good sense in this rule, and that it applies with peculiar force to a case where the patentee has slept for a great length of time upon his naked patent right without carrying it into practical use. The present case, however, cannot be considered as coming strictly within this rule. The application is not altogether ex parte. It is made on notice of the motion, and has been resisted by counsel, and was open to the hearing of opposing affidavits. We do not therefore mean to dispose of the application upon this point; although we think the reason and good sense of the rule is applicable to the case, and would suggest it as fit and proper to be adopted in all cases where the bill does not allege the complainant to be the original inventor.

Whether the complainant's patent is good and valid so as ultimately to secure to him the right he claims, is not a question for decision upon the equity side of this Court. That is a question which belongs to a Court of Law, in which the parties have a right of trial by a jury. The equity jurisdiction exercised by the Court over patents for inventions is merely in aid of the common law, and in order to give more complete effect to the provisions of the statute under which