Sullivan v. Redfield.

the patent is granted. And this jurisdiction should, of course, never be exercised but upon the supposition, that the applicant for the aid of the Court, has a right, which has been infringed by the party against whom the injunction is prayed.

It is not a matter of course to grant an injunction upon the mere exhibition of the patent, and an allegation that it has been infringed. The patent may be, upon a trial at law, prima facie evidence of the right. But in order to warrant an interference by injunction, there ought to be but little, if any doubt in the minds of the Court as to the validity of the patent, especially where the case rests entirely upon the complainant's own showing, without any opposing testimony.

It has been urged on the part of the complainant, that under the provisions of the act of Congress of the 15th of February, 1819, the patent itself gives to the patentee a right to claim the interference of this Court by injunction. That act declares, "that the Circuit Courts of the United States shall have original cognizance, as well in equity as at law, of all actions, suits, controversies, and cases, arising under any law of the United States, granting or confirming to authors or inventors, the exclusive right to their respective writings, inventions, and discoveries. And upon any bill in equity, filed by any party aggrieved in any such cases, shall have authority to grant injunctions, according to the course and principles of Courts of Equity, to prevent the violation of the rights of any authors or inventors, &c. on such terms and conditions as the said Courts may deem fit and reasonable."

This act does not enlarge or alter the powers of the Court over the subject matter of the bill or the cause of action. It only extends its jurisdiction to parties not before falling within it. Before this act it had been held, that a citizen of one state could not obtain an injunction in the Circuit Court for a violation of a patent right against a citizen of the same state, as no act of Congress authorized such suit. This act removed that objec

b 6 vol. L. U, S. 369.

4 Hall Law Journ. 60.

Sullivan v. Redfield.

tion, and gave the jurisdiction, although the parties were citizens of the same state. But in the exercise of the jurisdiction in all cases of granting injunctions to prevent the violation of patent rights, the Court is to proceed according to the course and principles of Courts of Equity in such cases. that the questions presented in the present case are precisely where they would have been without this act.

In support of the present application, much reliance has been placed upon the case of Livingston and Van Ingen, decided in the Court of Errors of this state. But a little consideration will show there is no analogy between the two cases. The right of Livingston and Fulton was founded upon acts of the legislature, which were clear and unambiguous. And if those acts were considered valid and constitutional, no doubt could exist as to the right. There were no facts in dispute, nor could any arise, upon which it was requisite for a jury to decide. There was, therefore, no necessity, or propriety, in sending the parties into a Court of Law to establish their right. That right depended solely on the constitutionality of the statutes under which it was claimed. This question belonged exclusively to the Court, and not to a jury to decide; and which question, if sent to a Court for trial, would, according to the course of the Courts of this state, come back again for ultimate decision to the tribunal where it then was. And independent of this, Livingston and Fulton had been in the actual and exclusive enjoyment, and practical exercise of their right for at least three years.

It will be in vain to look for the circumstances in the present case to support the analogy. The right, in point of law, is, to say the least, doubtful. Some of the questions involved in the inquiry are exclusively for a jury; and the allegations in the bill, as to the practical exercise and enjoyment of the right claimed, are vague and ambiguous. In what particulars the complainant's application is open to these objections, will here

d 9 John. 507.

Sullivan v. Redfield.

after be noticed. We would not be understood as having formed, nor do we mean to express, any decided opinion upon the validity of the patent. We only notice the objections to it, so far as may be proper and necessary to regulate our judgment in determining, whether such a case is presented as to entitle the complainant to an injunction, according to the course and principles of Courts of Equity in like cases.

The rule in the English Court of Chancery, on this subject, is: That where a patent has been granted, and there has been an exclusive possession of some duration under it, the Court will interpose its injunction, without putting the party previously to establish the validity of his patent at law. But when the patent is recent, and upon an application for an injunction, it is endeavoured to be shown, in opposition to it, that there is not good specification, or otherwise, that the patent ought not to have been granted, the Court will not, from its own notions respecting the matter in dispute, act upon the presumed validity or invalidity of the patent, without the right having been ascertained by a previous trial; but will send the patentee to law, and oblige him to establish the validity of his patent in a Court of Law, before it will grant him the benefit of an injunction.e And we are not aware of any decisions in the Courts of the United States, or in those of any of the states, which are at variance with this rule. We will proceed then briefly to notice how far it applies to the present case: and first, as to the objections taken to the patent and specification.

We have not the patent before us; and all that the bill states of its contents is, that on the 4th day of December, 1816, the complainant obtained letters patent "for a new and useful improvement in the steam tow-boat." This grant presupposes the knowledge and use of a steam tow-boat, of which the patentee does not claim to be the inventor, but his patent is for an improve

e 3 Merivale, 624.

Sullivan v. Redfield.

ment in such steam tow-boat. The bill sets out the specification, and so far as it contains a description of the complainant's invention, is 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 engines from the towing vessel to vessels taken in tow, and kept always at convenient distance."

This specification is obviously broader than the patent. The latter is for an improvement in the steam tow-boat; and the former contains a description of the steam towboat itself; of which the complainant claims to be the inventor, according to his specification. The patent and specification are connected together and dependent on each other for support. The specification should maintain the title of the patent. The latter should not indicate one thing and the former describe another, as the subject of the grant. Both the language and the policy of the act of Congress require that the specification should be clear, plain, and intelligible, so that others may be taught by it to make, or do the thing for which the patent is granted. The object of the specification is to inform the public, after the expiration of the term for which the patent is granted, what the invention is: and it ought, therefore, to put the public in possession of whatever is necessary to the use and enjoyment thereof.

Does this specification contain any such certainty of description? It states that the manner in which the power is to be applied, varies with the circumstances in some measure. Nothing

f Godson on Patents, 102-6.; 2 Barn. and Ald. 350.

Sullivan v. Redfield.

It

could be more vague and uncertain than this description. But it adds, "that it 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 vessel to vessels taken in tow, and kept always at convenient distance." On the argument much stress was laid on the word attaching. was said to signify a fixed and solid union between the two boats, which distinguished it from the ordinary towing in common use, which was called connecting the two boats by some temporary fastening. We are not aware of any such distinction between the two terms, as to draw after it such important consequences. The legal construction would be the same if the word connecting had been used instead of attaching.

The patentee cannot surely claim as his invention the towing of one boat after another. But the manner of attaching the two together would seem to be the right he asks to have secured to him. If he has discovered any important improvement in this respect, it should have been described in the specification with more certainty and precision. To say that the two boats must be so attached as to be kept always at convenient distance, does not seem to be that full explanation. which, after the expiration of the patent, would leave the public much wiser than they were before. What is a convenient distance, and the particular manner of attaching the one to the other, will still have to be ascertained by experience. If, according to the patent, the invention claimed is an improvement in the steam tow-boat, the specification, to be complete, should describe the one previously in use, that it might be seen clearly in what the improvement consisted, as the patent cannot cover more than the improvement claimed.

These are some of the objections to the patent itself, which present such strong doubts in the mind of the Court, as to its validity, that it is deemed improper to interpose an injunction until the validity of the patent has been tried at law.