This suit cannot be sustained on the ground assumed in the first point of the complainant. The charge of fraudulent misrepresentation and concealment is fully denied in the answer; and there is nothing in the proofs in the case to induce the court to believe the answer in this respect is not strictly true. The testimony of Jones is calculated to support this part of the answer rather than to impeach it. The rights were sold early in the spring, and some time in the summer thereafter the defendant showed the specification he had subsequently obtained from Washington to Jones, who then explained to him the defects therein. This appears to have been the first intimation or suspicion Jewett had that the machines made and exhibited by him did not agree therewith. Jones says the defendant finally assented *140to the correctness of his assertions, that the machine was not constructed according to that specification ; but requested him not to mention it to the complainant. This concealment óf a fact discovered long after the agreement and sale, could -not make the original transaction fraudulent. If the patent is invalid for want of a proper specification, I am satisfied the defendant did not suspect it at the time of the sale. I shall therefore proceed to examine whether the machine "which both parties supposed was patented to Ballou, was in fact covered and protected from infringement under the patent of December, 1821 ; and if it is not thus covered and protected, whether the complainant is entitled to the specific relief prayed for in his bill, or to any other relief .in this court against the defendant. ■ ■
On looking into this case, soon, after the argument, I became satisfied it was important to a correct understanding of ' the subject that the court should be furnished with copies of the patent, and of-the petition, specification and drawings upon which the same was granted. ' I therefore suspended the. decision of the cause for thirty days, to "give either party that might think proper to do so, an opportunity to procure the exemplifications from the patent office, and to file them with the register. And I-also gave-permission to either party, after those exemplifications were produced, to apply for the further examination of. witnesses, in connexion with the ex-, emplifications, -if the should think it necessary. The exemplifications were accordingly produced by the defendant, • and neither party has asked for leave to take any further testimony. And it is probable no testimony could have been produced which would have altered the result, The whole of the petition is recited' in the patent ;■ and the drawing corresponds with the specification which was exhibited to the witnesses on their examination.
The petition stated that Seth Ballou of Livermore, in the county of Oxford and state of Maine, the petitioner, had in-vented, constructed and applied to use a new and useful" improvement in threshing, sifting and winnowing wheat,.rye, . oats, and all "kinds of small grain ; also grass, flax, and all othér articles from which the seed might be obtained by thresh*141ing by machinery, at one operation; the machine being called Ballou’s threshing machine, constructed agreeably to the accompanying specification. In -the specification, that part of the machine which is the subject of controversy is thus' described: “ Upon a frame fitted for supporting the machine, there is a large wheel, of any convenient dimensions, say 4 i feet diameter, to the centre of which a crank is affixed for the purpose of turning it by hand. A band passes around this wheel, and also around a whurr or small wheel, say 8 inches in diameter, which is affixed to a large cylinder, say 2 feet in diameter and 2 feet 8 inches in length, or it may be larger or smaller according to the dimensions of the whole machine. This band is to give motion to the cylinder. In this cylinder are put four or any convenient number of rows of cogs, equally distant from each other.’ The cogs in each row occupy one half the space in the length of the cylinder ; that is, a space is left between each, equal to that occupied by a cog. These cogs are an inch and an half in diameter and two inches in length, or they may be larger or smaller with equal effect. Care however must be taken to place those of the second row so as to .follow the spaces in the first row ; and in the same manner All the other rows, be they more or less. The office of these cogs is to beat the grain from the straw.. Directly over this cylinder, dr, which-is preferred, about eight inches upon the surface from the top, down the side of the cylinder, a hopper or feeder is placed within a short distance, say half an inch, of the cogs, with a narrow opening at the bottom sufficient for the admission to the cylinder of the article to be threshed ; which opening may be gauged to any convenient space. Around the under half and fore part of the cylinder there is a casting which is called the barrel, placed within half an inch of the cogs. Immediately in rear of the cylinder are flyers, .constructed as follows,” &c. The manner in which the operation is performed is thus described in the specifiation : “ The ma- - chine being put- in motion, the grain or substance to' be threshed is .to be put into the hopper or feeder, and immediately comes in contact with the cogged cylinder, and is thus thoroughly and completely beaten from the straw. The: *142whole passes under the' cylinder, is. then taken by the flyers and thrown back upon the sieve, through which the grain passes,” &c." • . . .
- , At the time Of.the sale to the defendant, by Garcelon, and of the sale by the'former, to the compainant, printed copies, of the original patent, without the specification, were exhibited;' . at the bottom of which was also printed, “ For the schedule ' and improvement, see machine and directions.” The printed directions, which were also produced and shewn at the same time, .corresponded with the machines then exhibited. The cylinder and apron or barrel were-constructed thus ■: In the cylinder there were six rows of teeth projecting nearly two inches. therefrom, and, so set that ■ the teeth in every row would, irn.the revolutions of the cylinder, .follow some of those in the first row and pass between corresponding teeth placed in the apron or, barrel; so that in passing between each other, the-teeth in the revolving cylinder and.thosé in the apron - or barrel were three sixteenths of an inch ápart. On the part of the defendant, it is insisted that this is the manner in which the machine is to be, constructed by. the specification, and' that- every alternate row of cogs should be inserted in the apron or barrel; and some witnesses have been made to say this is the way a skilful machanic would make the machine from the specification. It is undoubtedly a correct rule in re-, lation to patents that if the specification is sufficiently explicit in its details to enable /a skilful mechanist to construct the patented improvement or invention, without any other aid, it i§ not to be considered void because some- of the minor details of the machine are npt set forth at large. As in the case, the revolving cylinder is to be put in motion-by means, • of a whurr on one end of the gudgeon, and by a large wheel turned with a crank. If the patentee, through inadvertence, - and without- any intention to deceive the public, had neglected. to mention that a band was to pass around the whurr and the large wheel, the specification would have been sufficient; that being the common and well known mode of performing the operation,. which ahy. person acquainted with machinery would at once supply. (Gray v. James, 1 Peters’ C. C. R. 394. Crossley v. Beverly, 3 Car. & Payne, 513.) But the *143patent is void if the machine-will not answer the purpose for which it was intended, without some addition, adjustment, or alteration, which the mechanic who is to construct it must introduce of his own invention; and which had not been discovered or invented by the patentee at the time his patent was issued. •
In this case, there is sufficient evidence that the placing of cogs or teeth in the apron or barrel, in addition to those in the revolving cylinder, was in use at the time the defendant purchased of Gracelqn, and previous thereto. But there is no evidence that the patentee had made that improvement, or discovery at the time his patent issued.
The patent law of the United States' requires a drawing "as well as a specification in cases of machinery; and the drawing may be referred to for the purpose of aiding a specification which would otherwise be imperfect. (Bloxam v. Elsee, 1 Car. & Payne’s Rep. 558. Earle v. Sawyer, 4 Mason’s R. 1.) As the drawings may be referred to for the purpose of aiding the written specification, to support the patent, it seems to follow that it may be resorted to by the adverse party to explain any thing which is doubtful or ambiguous in the written description; or for the purpose of shewing that the machine in question is not the same as that for which the patent was obtained. The written description says that, in the cylinder, there are to be put four or any convenient number of cogs, equally distant from each other, and in size equal to the distance between them. Nothing is said of any cogs or teeth in the barrel or apron.. But it is contended on the part of the defendant that each alternate row of cogs is to be inserted there, as the machine 'would be useless without them. On examination of the" drawing, there are two rows of cogs exhibited on the cylinder, so placed as to require two more rows thereon to -make- them equidistant, as stated in the specification; and there is nothing in the - drawing to show that any corresponding cogs or teeth are to be inserted in the barrel. Indeed, if the cogs in the cylinder are inserted as directed in the - specification it would be impossible for it to revolve on its axis if similar cogs were also inserted in the barrel. The spaces between the cogs being equal to the size, of *144a cog,- and those of the second row being placed so as to fill the spaces between those in the first, would occupy the whole length of the cylinder, and would necessarily strike against and be stopped by the cogs inserted in the barrel.. If the witnesses could make a valuable - threshing machine from this specification,- similar to the one actually sold, it must be by their own ingenuity and invention; and by going diredtly contrary to the directions therein" contained. . The court cannot be governed by the opinions of witnesses, however intelligent and respectible they may be, when those opinions are contradicted by the facts which are indisputable. I ani therefore compelled to decide that the machine sold by pracelon to the defendant, and by the latter to Bürrall, is not the same machine described in the petition and other papers On which the patent to Ballou was granted. It is satisfactory also for me to know that the conclusion at which I have arrived cor-r responds with the'decisión which my learned predecessor was, prepared to make, if the parties had consented to have that decision entered nunc pro tunc after he had resigned the office of chancellor. There is no evidence1 from which I have been able to form a satisfactory opinion whether the machine, in its present perfect' and useful form, was the one for which the patent was intended tobé taken out. But- as it differs so materially from the specification and drawings, which hardly could have been- the effect of accident, and from the expression at-the foot of the printed copy of the patent, “ For the schedule and improvement,, see.machine,” I am inclined to the opinion that the insertion of teeth in both' the barrel and cylinder, instead Of cogs in the'la.tter. only, was an improvement upon the original machine, made after the papers were prepared, in Séptember, 1821: If such was the Case, this important and valuable improvement of the original machine- should have ■ been secured by a new patent- for the same. In' the absence of that, there is no evidence that the patentee was the original inventor of that improvement. Hi's . oath only extends - to the ■ machine described in his specification and drawings, - '' , z
Much was said on the argument to show that Burralfs clover machine did not vary in principle from the machiné - *145purchased of Jewett, which was also intended to be used for the same purpose. But is not necessary for the decision of this cause to enquire as to the validity of Burrall’s patent. If his machine does not differ in principle from the other, but merely in its proportions, the patent is void. If he has made a material and useful improvement on the original machine, he is entitled to a patent for that improvement only. He has no right to use an original patented machine in connexion with such improvements, without the consent of the owner.
An objection has been made to the jurisdiction of this court on the ground that the federal courts alone have the power to pronounce upon the validity of a patent. Where a suit is brought to recover damages for the infringement of a patent right, the defendant is entitled to set up the invalidity of the patent as a defence to the action; and if he succeeds in establishing such defence, the court is to give judgment for the defendant, and to declare the patent void. An action of this description must therefore be brought in the circuit court of the United States, which alone has jurisdiction to give the proper remedy to either party. (7 John. R. 144.) The fifth section of the patent law of 1793 authorized the action for damages for the infringement of a patent to be brought in the circuit courts of the United States, or in any other court having competent jurisdiction. This, however, was found to be inconsistent with the power to declare the patent void conferred by the sixth section ; and in the act of April, 1800, the fifth section of the former law was repealed and another one substituted, giving jurisdiction in such a case to the circuit court only. (Laws of United States, vol. 5, p. 88, § 3.)
The judicial power of the United States extends to all cases arising under the constitution and laws of the union; but the federal courts cannot exercise that judicial power except in those cases where it has been delegated to them by congress. (1 Paine, 45.) The act of the 15th February, 1819, extended the jurisdiction of the circuit courts of the United States to suits both at law and in equity arising under the patent laws ; but there is nothing in that act which, either in terms or by necessary implication, renders that jurisdiction *146exclusive. Under the judiciary act of 1789, where it was intended to give exclusive jurisdiction to the federal courts, it is so stated in express terms. ■ - .
The remaining question is, to what relief is th e complainant entitled on the facts disclosed in the pleadings and proofs ? No recovery can be had upon the warranty contained in the deed of assignment of the 10th of March, 1823. That was an assignment of the machine patented to Seth Ballou in December, 1821. The right to that machine actually passed by the assignment, and was protected by the patent. But it was materially different from the machine exhibited, which both parties then supposed was patented, which was the real object of sale and purchase. The real subject of sale is not warranted by that deed, and no recovery can be had thereon for the defect of title to the patent right intended to be sold and conveyed thereby. In Bliss v. Negus, (8 Mass. R. 46,) a promissory note had been given upon an assignment from á prior assignee of certain rights in a patent. . Upon the trial, it appeared that the original patent was void ; but there was no evidence that the plaintiff was acqdainted with the fact at the time he sold to the defendant. As the plaintiff lost nothing and the defendant acquired nothing by the deed of assignment, thé note in that case was held to be without consideration and void.' The same principle is recognized in Hayne v. Maltby, (3 T. R. 438,) and in Ballas v. Hayes, 3 Serg. & Rawle, 427.) • In this case, the other agreement made at the timé of/the sale must be considered as part of the same contract; and the whole being founded on a mistake as to matter of fact, it would be unjust and inequitable to compel the complainant to carry the contract into effect. The note, deed of assignment, and the accompanying agreement in relation to the sale of patent rights, must be . delivered úp and cancelled. But the complainant is not entitled to recover ány damage Which he may have sustained in making mdchines. All the witnesses agree that the machine was valuable in itself. Independent of any exclusive right, with ordinary "care and diligence it would sell to farmers for " enough to pay the' expenses of constructing it; together with a reasonable profit to the mechanist. The only loss, from the *147mistake of the parties as to the real state of the case, therefore appears to be the increased price which might have been expected as a compensation for the supposed exclusive right. Even if actual damage has been sustained, I know of no principle of law which can authorize one party to recover damage from another, in such a case, where neither was guilty of any fraud. If Jewett had been benefitted, or had received any thing under the agreement, there might be some ground for calling upon him to refund what he had received.
If the complainant, after he had discovered the difference between the specification and the machine purchased by him, had simply asked for a return of the note and to have the agreement cancelled, and had confined himself to that in his bill, I should have been disposed to charge the defendant with costs. But he asked for more than he was entitled to ; and by his bill in this cause has endeavored to sustain the whole of that claim by charging the defendant with a fraudulent misrepresentation and concealment. In that part of the suit he has entirely failed. I therefore think it a case in which, upon the principles of equity, each party should bear his own costs.