The complainant in his bill represents that he is the as-signee of Woodworth’s patented planing machine, renewed and afterward corrected by ■the administrator; that being in the enjoyment of this valuable patent, in the county of Hamilton and elsewhere, about the month of June, 1846, the defendant, without any legal grant or license, did begin to make, use, and vend to others to be used, the machine aforesaid, and so continues, in violation of the •complainant’s rights; and he prays for an injunction and for general relief.
In his answer, the defendant admits the emanation, extension, surrender, and renewal of the patent, but requires proof of the complainant’s title. He admits that he is running one of Woodworth’s machines, under a license from Brooks & Morris, the former owners of the right now asserted by the complainant; and he avers that he has performed all the conditions, on his part, to be performed by the contract of license, except the payment of the money weekly, which he offered to pay frequently, but which was refused by Brooks & Morris, and afterward by the complainant; that he is now ready to pay the same as the court shall direct; and the defendant alleges that the complainant, in several particulars, has violated the contract Certain affidavits were read to support the bill, and others in support of the answer.
The complainant does not controvert the license set up in the answer, but he insists that the defendant has failed to comply with the conditions on which it was granted and was to be continued; that being bound to keep the machine running, and agreeing that a suspension for two weeks should be considered as an abandonment of the license, he sold the machine, and suspended the' use of it more than three monies; that the sale of the machine was in itself an abandonment of the license, as the license was limited to the use of one of the two machines owned by the defendant at the time of the contract, both of which he has since sold; and it is contended that the sale of the machine for use conveyed to the purchaser impliedly, if not expressly, his right to run it
The defendant objects to the ground of abandonment assumed by the complainant, as there is no such issue made by the pleadings, and contends that the complainant must be limited to the case made in the bill. In chancery, as at law, the proof must correspond with the allegations in the pleadings. But the complainant insists that he may show an abandonment of the license, which, if established, would be equivalent to no license, and this would support the allegation of the bill, that the defendant is running the machine without authority. The bill charges the defendant with using the machine without authority; but the defendant denies this,' and sets up a license on certain conditions, all of which he alleges have been performed on his part. The genuineness of this instrument is not denied, but the complainant alleges that the contract of license has become void and inoperative by reason of certain acts of the defendant; but what these acts are does not appear in the pleadings. At law there can be no doubt that this state of facts would require the plaintiff to plead over and allege the acts of the defendant, by which the license had been abandoned. The issue, whether of law or fact, would be thus made. But without a proper plea giving notice to the defendant, the facts could not be proved. A replication to the plea, merely traversing the license, would not lay a foundation for evidence of abandonment; and the same rule governs in chancery. The forty-fifth rule of chancery practice declares that “no special replication to any answer shall be filed. But if any matter alleged in the anwer shall make it necessary for the plaintiff to amend his bill, *308he may have leave to amend the same.” As a special replication is not allowed, the question of abandonment can only be brought before the court by an amendment of the bill.
NOTE [from original report]. There was a decree that the defendants should pay the complainants the amount due from the former, on account of rent stipulated to be paid for the use of said planing machine, under said license from the complainants, up to the time when complainants assigned their rights to Wilson; and further, that the injunction against the defendant be dissolved. [NOTE. During the progress of the suit, complainants assigned their rights as assignees to one Wilson, who filed a bill against the same defendant to enjoin infringement, and thereafter made a motion for a provisional injunction, which was denied. See Wilson v. Stolley, Case No. 17,839. Subsequently he brought an action at law for damages for the same infringement, in which he recovered against defendant. See Id. 17,840. For other cases involving this patent, Bee note to Bicknell v. Todd, Id. 1,389.]The license, on the conditions stated, gives to the defendant “the right of running either of his two machines, provided he does not ran more than one of them at the same time.” As a reference is made in the contract to the two machines owned by the defendant at the time, it is contended that the license can not be construed to extend to any other machine. The license was the result of a compromise between the defendant, who had one of two of Woodworth’s machines in operation, and Brooks & Morris, in whom the exclusive right to run those machines in the county of Hamilton was vested; and being in possession of two planing machines, the right to run either was given to the defendant Does this right extend to any other similar machine? Suppose both of these machines had been destroyed by fire, or in any other manner, could not the defendant have purchased another machine and used it under his license? This, it is believed, is not denied by the complainant. But it is alleged that the defendant sold both of his machines, and having done so, he had no right to purchase another. Now, the right to use the machine can only be made to depend upon the illegality of the sale of the two machines or the purchase of another. Whether the sale was an abandonment of the license can not be now considered, as there is no such averment in the bill; and if the purchase of another machine, or the sale of the two, as stated, be a violation of the rights of the complainant, it is not a matter within the license, and can not be made to operate either for or against it The contract authorized the defendant to run one of Woodworth’s planing machines, and the reference to the two machines then owned by the defendant seems to have been made with the view to give the right to use either, but not both at the same time. Such a license will always be construed to run a machine, unless in express terms it be limited to the identical machine referred to. There is no such limitation in the license to the defendant. Whether there was a transfer of the right under the license, on the sale of one or both of the machines by the defendant, cannot be examined, as there is no such allegation in the bill. The sale of a machine does not necessarily carry the right in this case, as it may have been made to a person who had, or expected to obtain a license. A sale by the patentee of the machine does not give an implied right to use it, as such right is exclusively vested in him and such persons as may have received it from him. But this inference does not necessarily follow where the sale of a machine is made by a person who has no exclusive right, but a license merely of use. So that, in this latter case, the extent of the transfer must depend upon the facts and circumstances proved. That such a right, being property, may be equitably conveyed, is admitted.
As the main, if not the only object of the bill, is to enjoin the defendant from running the machine he now has, which object can only be reached by showing an abandonment of the license, it is not deemed necessary to inquire whether there is a case,made to enjoin the defendant from constructing or vending the machine.